Trademark infringement litigation in Israel may involve claims concerning registered trademarks, well-known marks, passing off, misleadingly similar branding, online and advertising use, preliminary injunctions and monetary remedies. For foreign trademark attorneys and litigation counsel, the Israeli proceeding should be assessed together with the scope of the registered rights, the actual use complained of, the relevant market circumstances and any related proceedings before the Registrar of Trademarks.
This guide focuses on infringement proceedings before the Israeli civil courts. For broader representation in trademark disputes, including oppositions, cancellation and competing-application proceedings, see our Trademark Litigation in Israel practice page.
What Rights Does an Israeli Trademark Registration Provide?
Section 46 of the Israeli Trademarks Ordinance gives the registered proprietor the exclusive right to use the registered mark in relation to the goods or services for which it is registered, subject to any conditions or limitations recorded in the register.
The scope of protection therefore depends on the mark as registered, the relevant specification of goods or services and the particular use made by the alleged infringer.
Israeli law also provides protection for well-known trademarks. Depending on whether the well-known mark is registered in Israel and on the goods or services involved, the scope of protection may extend beyond the ordinary rights arising from a national registration.
Who Can Bring a Trademark Infringement Claim?
Section 57 of the Trademarks Ordinance provides the statutory framework for infringement actions by the proprietor of a registered trademark or a well-known trademark.
An ordinary unregistered mark does not create the same statutory infringement claim merely because it has been used in commerce. However, the owner may have other causes of action, most importantly passing off under the Commercial Torts Law, where the required elements can be established.
What Can Constitute Trademark Infringement in Israel?
The Trademarks Ordinance defines infringement to include unauthorized use of a registered trademark, or in relevant circumstances a sufficiently similar mark, in relation to the goods or services for which the mark is registered or goods or services of the same description. The Ordinance also addresses use of a registered trademark in advertising and specific forms of protection for well-known trademarks.
In practice, infringement analysis can require close comparison of the signs, the scope of the registration, the goods or services, the way the sign is used and the commercial context in which consumers encounter it.
The Israeli “Triple Test” for Confusing Similarity
Israeli courts have traditionally evaluated confusing similarity through a group of factors commonly referred to as the triple test. The principal considerations include the appearance and sound of the marks, the nature of the goods or services and the relevant customers, and the remaining circumstances of the case.
The assessment is not mechanical. The relative weight of the factors depends on the facts, including the inherent and acquired distinctiveness of the earlier mark, the manner in which the marks are encountered in the market and the overall commercial impression. For a focused discussion of this framework, see Trademark Triple Test in Israel.
The comparison in a registered trademark infringement claim focuses primarily on the protected mark and the allegedly infringing sign. A passing-off claim may require a broader assessment of the overall presentation of the goods or services and the goodwill relied upon by the claimant. A leading illustration is the Adidas Three-Stripe Trademark Case in Israel.
Trademark Infringement and Passing Off Are Different Claims
A registered trademark infringement claim and a passing-off claim protect related but distinct interests. Trademark infringement is based on the rights created by the Trademarks Ordinance. Passing off is a separate commercial tort under Section 1 of the Commercial Torts Law.
A passing-off claim generally requires the claimant to establish goodwill and a likelihood that the defendant’s conduct will cause customers to mistake the defendant’s goods or services for those of the claimant or to believe that the businesses are connected.
Passing off can therefore be particularly important where the branding relied upon is not registered as a trademark, where the disputed presentation goes beyond the registered mark itself, or where the claimant relies on broader market reputation and get-up. For a detailed guide, see Passing Off in Israel.
Well-Known Trademarks
Israeli trademark law contains specific provisions protecting well-known trademarks. A well-known mark that is not registered in Israel may receive protection in relation to the goods or services for which it is well known, subject to the statutory requirements.
A well-known mark that is registered in Israel may receive broader protection in relation to goods or services that are not of the same description where the statutory conditions concerning an association with the trademark owner and potential harm are satisfied.
The available remedies differ depending on whether the well-known mark is registered. This should be reviewed at the outset of an enforcement matter.
Preliminary Injunctions in Trademark Cases
Preliminary injunctions can be commercially important in trademark litigation because continued use of a disputed mark during the litigation may affect market position, consumer perception and the value of the rights being enforced.
An applicant for interim relief must satisfy the applicable Israeli civil-procedure standards for provisional remedies. The court may consider the strength of the prima facie case, the balance of convenience, equitable considerations, delay and the practical consequences of granting or refusing interim relief.
Applications for urgent relief should therefore be prepared with evidence addressing both the legal rights and the immediate commercial harm alleged to result from continued use.
Evidence in Israeli Trademark Infringement Proceedings
Relevant evidence may include trademark registration certificates and register extracts, examples of the defendant’s use, packaging and advertising materials, website and social-media evidence, sales information, distribution channels, evidence concerning reputation and consumer recognition, correspondence between the parties and evidence of the actual market circumstances.
Where passing off or a well-known mark is alleged, evidence of goodwill, advertising expenditure, sales, market share, duration and geographic extent of use and consumer recognition may become especially important.
Foreign counsel should preserve dated examples of online use and advertising as early as possible, particularly where digital content may later be changed or removed.
Defenses and Permitted Use
Not every use of a registered trademark constitutes infringement. Section 47 of the Trademarks Ordinance preserves certain bona fide uses, including genuine use of a person’s own name or business name and genuine descriptions of the character or quality of that person’s goods.
Other defenses can depend on the precise way in which the sign is used, whether the goods are genuine, the relationship between the parties and whether the use creates a misleading impression of authorization, sponsorship or commercial connection.
The defense strategy should therefore be developed from the actual use complained of rather than from the trademark registration in isolation.
Can the Defendant Challenge the Trademark Registration?
A defendant may contend that the registered right relied upon by the claimant should not remain on the register or should be limited. Israeli law provides separate mechanisms for rectification, deletion and cancellation of registered trademarks, including challenges based on invalid registration, bad faith and non-use.
The relationship between the court infringement case and any proceeding before the Registrar should be considered strategically, particularly where validity or non-use could materially affect the enforcement claim.
For the post-registration administrative procedures, see Trademark Cancellation in Israel.
Proceedings Before the Registrar as Part of Litigation Strategy
Trademark litigation strategy in Israel is not limited to court proceedings. Depending on the status of the relevant application or registration, a dispute may also involve proceedings before the Registrar of Trademarks.
If an application has been accepted but not yet registered, a third party may consider a Trademark Opposition in Israel. Where competing pending applications exist, the dispute may fall within Section 29 competing-application proceedings. If the mark is already registered, invalidity or non-use issues may be raised through cancellation or rectification procedures.
These proceedings may affect timing, leverage, settlement strategy and the scope of the rights being asserted in court. They should therefore be considered as part of the same overall disputes strategy.
Remedies for Trademark Infringement
Section 59 of the Trademarks Ordinance provides for injunctive relief and damages in an infringement action, in addition to other relief that the court is competent to grant.
Section 59A also gives the court powers concerning property produced through the infringement or used in committing it, including destruction, transfer in defined circumstances or other appropriate orders.
Where the claim concerns a well-known trademark that is not registered in Israel, the statutory trademark remedy is more limited. Where the facts also establish passing off or another cause of action, additional remedies may be available under the applicable legislation.
Damages and Monetary Relief
The monetary case should be developed together with the liability case. Depending on the causes of action pleaded and the available evidence, relevant issues may include the claimant’s actual loss, the defendant’s commercial activity, causation, account of profits, and other remedies recognized under the applicable law.
Where passing off or another Commercial Torts Law claim is established, the statutory remedies under that law may also become relevant, including in appropriate cases damages without proof of actual damage subject to the statutory conditions.
Jurisdiction and Forum
Trademark infringement claims are brought in the Israeli civil courts. The correct court depends on the remedies sought and the applicable jurisdictional rules.
For foreign counsel, the forum and relief strategy should therefore be reviewed before proceedings are filed rather than assumed solely from the monetary value of the claim.
Settlement and Coexistence Strategy
Trademark litigation frequently proceeds alongside settlement discussions, coexistence negotiations, licensing arrangements or undertakings concerning future use.
A settlement should be reviewed not only from the perspective of the immediate court case but also for its potential effect on pending applications, existing registrations, future filings, online use, distribution arrangements and parallel disputes in other countries.
Where the dispute also involves proceedings before the Registrar, any settlement concerning the use or registration of similar marks may require careful coordination with the administrative proceeding.
Working with Foreign Counsel in Israeli Trademark Litigation
Foreign trademark attorneys and litigation firms may instruct Drori Stav IP to act as Israeli counsel in trademark infringement disputes.
At the beginning of a matter, it is useful for instructing counsel to provide the Israeli registrations or applications, the challenged sign and examples of its use, relevant correspondence, evidence concerning the client’s use and reputation, the Israeli commercial activity at issue, and information concerning related proceedings abroad.
Where litigation has already begun in another jurisdiction, relevant pleadings, evidence, settlement positions and decisions can help identify issues that may also arise in Israel, while the Israeli case remains governed by Israeli law and procedure.
We review the Israeli infringement and passing-off issues, advise on litigation and interim-relief strategy, prepare and manage evidence and conduct the proceeding before the Israeli courts. Where appropriate, we coordinate the Israeli litigation with foreign counsel so that positions taken in Israel are considered together with the client’s international trademark strategy.
Israeli Trademark Litigation Counsel
Trademark litigation in Israel requires the integration of trademark law, civil litigation, evidence and commercial analysis.
Drori Stav IP combines litigation experience with trademark prosecution and proceedings before the Registrar. This is particularly relevant where the scope of a registration, prosecution history, earlier rights, distinctiveness, use and administrative proceedings are central to the dispute.
Our lawyers have also authored works on Israeli intellectual property law, including Intellectual Property Law in Israel and Monetary Remedies in Intellectual Property Procedures. See our books and publications.
For broader representation in Israeli trademark disputes, see our Trademark Litigation in Israel practice page.
For instructions concerning an Israeli trademark infringement matter, contact our trademark litigation team at office@dwo.co.il.
Legal Sources
The principal statutory framework is the Israeli Trademarks Ordinance. Passing-off claims are governed by the Commercial Torts Law, 5759-1999.
