An international trademark owner discovers a product carrying a confusingly similar mark in an Israeli online store, an advertisement suggesting an unauthorized affiliation, or a former distributor continuing to use the brand after a licence ends. Sending a cease-and-desist letter may end the infringement without litigation. It may also warn the alleged infringer to remove listings, move inventory or change the evidence before the owner has established the extent of the activity.
Under Israeli law, the decision to send a trademark infringement warning letter, and what it should disclose, requires an assessment of the registered rights, the alleged use, the evidence available, the need for urgency and the recipient’s likely response. There is no general statutory rule requiring a letter before every Israeli trademark infringement lawsuit. A letter is a strategic instrument, not a substitute for proof.
Preserve Evidence Before Notifying the Alleged Infringer
The first step is to record what is actually happening. For a physical product, preserve a sample, its packaging, the seller’s invoice and evidence connecting the transaction to the business concerned. For an online advertisement, record the full URL, the date and time, the search or navigation sequence, the displayed mark, seller identification and the landing page.
A test purchase can establish that a particular product was offered or supplied, but it does not necessarily establish that the product was counterfeit. The authenticity of a suspect article may need a separate examination and evidence from someone familiar with original products. See OtterBox v. Fixphone (2026), where the court found possession of branded-looking cases without sufficient proof that they were counterfeits.
Preserving the original files and records of how evidence was obtained can be important where screenshots or electronic transactions are disputed. Investigation must be conducted lawfully. A business should not assume that a public listing will remain available after the recipient is notified of a possible claim.
Check the Israeli Trademark Registration and Commercial History
Before making legal demands, confirm the Israeli registration number, the proprietor, the represented mark, its goods and services and any limitations or disclaimers. An overseas registration does not automatically establish identical rights in Israel. Where the mark is unregistered, consider whether Israeli goodwill and misleading presentation can support a passing-off claim, or whether another statutory protection applies.
The parties’ commercial history may be decisive. Was the recipient once a licensed distributor? Was permission to use the mark granted in writing or through conduct? Was the owner aware of the use over a long period? Have the parties agreed on stock sell-off rights, particular distribution channels or use after termination?
An assertion of infringement can be undermined where the underlying licence remains effective or the registration does not cover the use alleged. Before threatening litigation, consider whether the recipient has credible grounds to challenge the registration itself through proceedings under Sections 38 or 39 of the Israeli Trademarks Ordinance. See Trademark Cancellation in Israel.
Why Send a Warning Letter Before an Israeli Trademark Lawsuit?
The most immediate objective is often to stop the use, secure a voluntary undertaking, remove offending listings or agree on treatment of existing inventory. A suitable letter may also expose the recipient’s position: it may identify a different supplier, claim that goods are genuine, assert a licence or deny that the use creates confusion.
Israeli courts may consider the parties’ good faith and pre-litigation conduct when assessing costs and suitable relief. In Katz v. Rotman, Central District Court, Civil Case 7648-09-08 (8 July 2010), a copyright decision, the court discussed the expectation in the particular circumstances that a potential defendant be given a chance to remedy a wrong before suit. That judgment did not impose a statutory duty to send a warning before all trademark claims.
The relevant assessment remains fact-sensitive. Where urgent intervention is necessary or giving notice could frustrate an effective remedy, prior contact may be unsuitable.
How Much of the Evidence Should the Letter Reveal?
A detailed letter identifying the right, specific acts, central evidence and possible consequences allows the recipient and its lawyers to make a realistic assessment of the risk. It may improve the prospects of prompt compliance or settlement. It can also create a record demonstrating that the dispute was raised on a defined factual basis.
Disclosure is not always beneficial. If evidence of several outlets has been collected and investigation into the distribution chain is continuing, revealing every source and transaction may allow the recipient to tailor its position or change its operations before further documentation is obtained.
The appropriate balance is to make allegations sufficiently clear for the recipient to understand and answer them while preserving evidence and strategy that need not be disclosed at this stage. Withholding some evidence is different from making false or misleading allegations. Accuracy and good faith remain essential.
Material inconsistencies between the original warning and a later statement of claim can create evidentiary difficulties. Failure to mention every argument in the letter does not automatically bar the argument at trial, but statements about known facts should be prepared carefully.
What Remedies and Demands Should the Letter Identify?
The demands should correspond to the established right and the objective sought. Possible requirements include ending an identified use, taking down advertisements, ceasing marketing of specified goods, removing misleading claims of official affiliation, and undertaking not to repeat particular conduct.
Where inventory or distribution is involved, requests can address remaining stock, packaging, seller or supplier records and preserving relevant documents. A request for sales information may help assess damages, but a letter alone does not automatically compel production of all financial records before proceedings.
The author should avoid asserting that the trademark owner automatically receives a fixed amount of statutory damages merely because a registered mark was infringed. The monetary framework depends on the cause of action, evidence of loss and potentially restitution or accounting. Passing off under the Commercial Torts Law has a distinct statutory-damages provision subject to its own requirements.
See Trademark Infringement Damages in Israel for the difference between loss, estimation, profits and statutory compensation for passing off.
When Is It Better Not to Send a Cease-and-Desist Letter?
Where there is a real risk that warning the other party will lead to concealment of goods, destruction of evidence or deliberate steps frustrating judicial relief, an urgent court application may be appropriate. The same applies where an imminent launch threatens harm that cannot adequately be repaired later.
A request for a preliminary injunction in Israel is not automatically granted merely because the activity appears suspicious. The applicant must satisfy the applicable civil-procedure tests, including prima facie entitlement, necessity, balance of convenience, good faith and urgency. An application without notice requires further exceptional grounds.
Prolonged negotiations can also affect an eventual claim of urgent harm. Genuine attempts to settle are not necessarily acquiescence, but unexplained delay may weigh against preliminary relief. See Preliminary Injunctions in Israeli Trademark Cases.
How Should a Business Respond to a Trademark Infringement Letter?
The recipient should first preserve the letter and relevant records, check the asserted Israeli registration, identify which products or advertisements are challenged and examine the actual source of the goods and the terms of any existing licence.
Where the letter is vague, a short response asking for the registration particulars, allegedly infringing acts and legal basis for the demands may be suitable. This approach avoids premature disclosure of the defense but may be perceived as evasive and may not discourage proceedings.
Where strong defenses exist, a more substantive response may be preferable. Possible positions include lack of confusing similarity, genuine goods sold through parallel importation, a permitted truthful reference to a manufacturer, a valid licence, or an objectively supported challenge to the asserted registration.
A defensible response need not disclose every document or legal theory. Its extent should be chosen by considering the strength of the position, the urgency of the allegations and the likelihood of productive negotiations. Threatening invalidation of the claimant’s registration without a sound legal basis can damage credibility.
When Can a Response Improve the Settlement Position?
A focused response identifying a serious factual or legal difficulty may cause the claimant to reassess its position. The most effective argument is not necessarily the longest list of alternative theories, but one supported by documents and directed to an essential element of the claim.
Where the parties discuss settlement, the nature and purpose of the exchange matter. Merely writing “without prejudice” on a document does not guarantee that every statement in it is privileged or inadmissible under Israeli law. The legal treatment depends on the substance and circumstances of the communication.
A negotiated resolution may cover future use, stock disposal, changes in branding, mutual undertakings and allocation of costs or compensation. Any agreement should address the identity of the trademarks, exact acts and parties involved, rather than rely on a generic promise not to infringe.
How Does the Correspondence Affect Later Litigation?
If the dispute proceeds to court, the parties may compare factual explanations given in correspondence with documentary evidence, witness testimony and accounting records. The exchange may clarify whether the controversy concerns counterfeiting, use of a similar mark, an authorization dispute or the source of goods.
A trademark proprietor should not simply convert a cease-and-desist letter into a statement of claim without updating the investigation. Likewise, the recipient should not assume that an initial commercial response replaces proper evidence or a court defense.
Where the recipient is a company, personal liability of managers requires its own factual foundation; copying every director on a warning does not establish a claim against them. See Personal Liability for Trademark Infringement in Israel.
Preparing the Correct Strategy for Foreign Trademark Owners
The letter should be guided by the commercial objective and evidence. A request to remove a single advertisement requires a different approach from a suspected nationwide counterfeit distribution operation. Both differ from a post-termination licence dispute with years of documents and accumulated stock.
International counsel should establish the local registration position, secure evidence of Israeli activity, identify the responsible entities and decide whether the preferred outcome is rapid cessation, an agreement or litigation. The letter should present a grounded legal case without abandoning opportunities to obtain further proof.
For the core infringement rules see Trademark Infringement Lawsuits in Israel. For the firm’s contentious practice, see Trademark Litigation in Israel.
