As promised – here goes the first post about Israeli IP litigation

Well, you are considering beginning a trademark litigation in Israe, but who will hear your trademark case?

The first thing you need to know is that there is no IP court in Israel, and the regular court system hears IP matters.

Having said that, the commissioner of patents, trademarks and designs has jurisdiction to hear cases that have to do with the validity of trademark applications – competition procedures, oppositions, cancellations, etc.

So, basically, here are the relevant options:

-          Opposition or request to cancel a registered mark – the commissioner of patents, trademarks and designs. At the moment, in addition to the commissioner himself, there are two more “judges” (they are in fact called adjadicators) at the trademark office (we are proud to say that one of them is a “veteran” of our firm), who take most of the trademark cases. The current commissioner seems to prefer patent cases.

-          A suit that includes a motion to cease using a mark – since in most of the cases the plaintiff wishes the defendant to stop using his mark, he would have to address the district court. According to the Israeli law today, only the district court has an authority to grant such an order. Therefore, most of the intellectual property cases are filed in the district court, which is a relatively high court in Israel.

-          A suit only for monetary compensation – if a plaintiff has no interest in stopping the use of his mark (e.g. because the use of his mark ceised, or he wants to save cost), he can choose to waive his right to file a suit to the district court and file his suit in the magistrates court, instead. Filing a suit in the mesigtrates court can have advantages in touch cases, since the plaintiff has much more influence on the choice of venue and hence – on the choice of judge.

Location – there are a number of alternatives to choosing a venue for filing a suit. The most important ones are the place where the plaintiff or the defendant live or work, or the place where the infringment took place. However, a suit can be filed in any court in the same county in the relevant venue. Since Israel is a small country, this allows a lot of flexibility, and provides plaintiffs advantage in choosing the venue of the fight.

Israel is a common law system, based on the English legal system, with strong american emphesis, and some german and canadian emphesis. However, there are no juries in Israel, and all trial are bench trials.

The regular courts system handles IP disputes and there are no dedicated “IP Courts”. However, since many of the cases start in requests for preliminary injunctions, it is quite expected which judges will be appointed to sit the cases.

Roughly speaking, the Israeli court system respects IP rights to the extent that it will grant injunctions in most of the cases where rights are registered. However, while attorney fees in Israel are reletively low, so are monatery compensation and damages ruled.

The Israeli Courts System is a 3-fold system:

1) Megistrates Court - This is the court of the lowest rank. IP cases will be filed in this court only rarely, if the plaintiff has no interest in injunctions and only seeks monetary relief.

2) District Court – This is the major court for IP cases in Israel. It handles most of the litigations. The district court of Tel-Aviv handles the largest number of cases. It is entitled to give all kinds of remedies.

3) Supreme Court – Also serves as court of appeal on the decisions of the district court.

The Commissioner of Patents, Trademarks and Desings

The commissioner of patents, trademarks and designs serves as a judicial authority that handles oppositions, requests for cancellations, and other applications concerning the validity of patents, trademarks and designs.

For specific advice regarding litigation matters, please don’t hesitate to contact Mr. Zeev Fisher, at zeev@fwjip.com

In a notice of the commissioner of patents, trademarks, and designs, it was noted that circulars of the commissioner on policy will become affective 3 months after publication on the PTO’s website, unless stated otherwise.

It was also noted that drafts of important circulars will be published for comments, as part of a due process.

Israel was voted today as a new member of the OECD.

One of the main issues noted as an advantage of Israel was it’s high technology industry, and particularly the number of patents produced in it.

Experts estimate that billions of dollars in foreign investments will flow into Israel as a result. It will be interesting to see whether more patents will be filed by international companies.

In an important decision, the deputy commissioner of patents recently ruled that late national stage entry of a patent application will not be approved without a reason for the delay.

The deputy commissioner ruled that since the standard for allowing a late application enter the national stage is “due care”, this standard must be met. “Due care” includes, as a very first and basic step, finding out what the deadline is.

However, the interesting part of the decision is not the (expected) rejection of the petition, but rather the examples that the deputy commissioner brought to cases when such a petition will be allowed.

One such a case is when the applicant simply confused Israel (IL) with Iceland (IS). In such a case, the applicant did try to find out the date, but made an understandable mistake and hence, a petition for late entry of the national stage will be allowed.

Another case is a case when an applicant mistakenly thought that Sunday is a day off in Israel, like in most of the world, and filed the application on the Monday thereafter.

Mr. Keith Jones, head of FWJ-UK, recently spoke on the recent European practice changes and on European oppositions, to the in-house IP counsel forum.

IP managers of many leading Israeli companies (names, unfortunately, cannot be published) attended, and enjoyed a nice evening at Fisher Weiler Jones’s new offices at Habarzel Street, while listening to Mr. Jones’s lecture.