Anti-Counterfeiting in Israel
Over the past two decades, Israel has built a solid reputation for enforcing intellectual property rights in Israel in general and for enabling rights owners to take effective action against counterfeiters in particular.
Trademark rights, copyrights and design rights are enforced in Israel through civil and criminal proceedings:
Civil Enforcement of trademarks, copyrights and designs is based on the following laws:
- The Trademarks Ordinance
- The Copyrights Law
- The Designs Law
- The Commercial Injustice Law
There is also extensive Israel case law which recognizes causes of action for unjust enrichment.
Civil enforcement may be undertaken in various ways. One option is delivery of a cease and desist letter to the counterfeiter. Such letters are not recommended when a rights owner wishes the counterfeiter to surrender the suspect merchandise, since the counterfeiter will most likely sell or distribute the merchandise immediately following receipt of the letter.
Alternatively, trademark rights and copyrights may be asserted in the Courts through the filing of a Statement of Claim with the Israel Courts. The Statement of Claim may be accompanied by an Application for Interim Remedies. Such remedies may include, inter alia, an interim injunction and an interim collection order.
Two governmental entities enforce trademark rights and copyrights in Israel:
The Israel Police:
The Israel Police has dedicated Intellectual Property Enforcement Units in the Northern, Central, TelAviv and Southern Districts. There is also a National Unit which handles cases which are complex or span a number of jurisdictions.
A rights owner or the owner’s representative (hereinafter “rights owner/representative”) may file police complaints with these units regarding counterfeiting of trademarks and copyrights. After the filing of a complaint, the police investigate and decide whether to obtain a warrant and carry out a search at a suspect's premises.
The police also have the authority to initiate investigations and searches on their own initiative.
In at least half of the cases, the police request that the rights owner/representative be present during the search in order to identify counterfeit merchandise.
Following an investigation and/or search, the police decide whether to indict suspects. In the event that an indictment is filed, Criminal Court proceedings take place in which the rights owner/representative may be summoned to testify.
Most Criminal Court proceedings end in a conviction. Sentences typically include a suspended prison sentence, a fine and a destruction order.
It is important to note that the rights owner is financially responsible for the storage of all merchandise that is seized by the police and for the destruction of the seized merchandise following issuance of a Court order.
The Customs Authorities:
The Israel Customs Authorities (hereinafter "Customs") are responsible for monitoring importation of merchandise into Israel as well as the territories which are controlled by the Palestinian Authority.
There are currently two international airports (Ben Gurion Airport near Tel Aviv and Ramon Airport near Eilat), three seaports (Haifa, Ashdod and Eilat) and three land border crossings (with Jordan and Egypt) through which merchandise enters Israel.
Customs have the authority to seize merchandise which infringes trademarks, designs or copyrights.
Customs will not detain gray market goods.
A trademark owner may file a Customs Monitoring Notice with Customs. There is no official filing fee and one Customs Monitoring Notice will suffice, irrespective of the number of trademarks and/or copyrights to be monitored.
There is no need to renew the Customs Monitoring Notice since it is not limited in duration.
Customs have the authority to initiate investigations and seizures on their own initiative.
If Customs detect goods which are suspected to be counterfeit, the authorities will seize the goods and ask that the rights owner/representative confirm whether the goods are counterfeit. If the rights owner/representative certifies that the goods are counterfeit, Customs will seize the goods. The process that follows depends on the quantity and value of the goods seized.
Customs will seize suspect goods for three working days and will immediately notify the party named in the Customs Monitoring Notice or the rights owner/representative if a Customs Monitoring Notice was not filed. Customs will also send digital photographs of the seized goods to the rights owner/representative.
This notification usually sets the amount of a bank guarantee which the rights owner/representative must post in order for Customs to seize and detain the suspect goods. This guarantee is intended to cover damages in the event of a determination of unjustified seizure of goods. The amount of the guarantee is related to the value of the goods, as assessed by Customs. In most cases, the rights owner/representative obtains a sample of the goods only after the guarantee is posted.
Customs will disclose the quantity of goods detained to the rights owner/representative. Prior to the filing of the bank guarantee, Customs will not divulge the particulars of the importer.
If the value or quantity of the goods seized is comparatively small, Customs may exercise its discretion to seize the goods using the following abbreviated procedure:
Prior to seizing the goods, Customs may require the owner/representative to provide a brief written opinion confirming that the goods are counterfeit and to submit a letter of undertaking to join Customs as a party if the importer sues for the return of the goods. As well, the rights owner/representative must agree to indemnify the importer for any harm caused if it becomes apparent that the goods were illegitimately seized. The rights owner/representative is not obligated to provide a bank guarantee. Following receipt of the opinion and the undertakings, Customs will destroy the goods, without divulging the particulars of the importer.
However, in most cases, Customs will act as follows:
Once the rights owner/representative ascertains that the goods are counterfeit and the rights owner/representative wishes Customs to seize them, the rights owner/representative named in the Customs Monitoring Notice or otherwise identified must immediately post a bank guarantee in order to receive the particulars of the importer. If the rights owner/representative does not post a bank guarantee, Customs will release the goods to the importer.
Once the rights owner/representative posts a bank guarantee, Customs will disclose the particulars of the importer in order to enable filing of a civil lawsuit by the rights owner. The goods will be released if the rights owner/representative does not show evidence that a lawsuit has been filed against the importer within ten days. In addition, if a lawsuit is not filed against the importer, the bank guarantee may be forfeited and the rights owner will be ineligible to receive compensation.
Once the requirements of Customs are met, Customs will hold the goods until a court decision is obtained or until the parties reach an agreement.
It is important to note that goods are stored by Customs at third-party storage facilities. Charges for cumulative storage costs and destruction of goods will be determined based on an agreement between the parties or according to a court decision. If the storage and destruction costs are not paid by the responsible party that has agreed or been ordered to pay, the sum of these costs will be deducted from the bank guarantee which has previously been posted by the rights owner.