Special units in the Israeli police force are dedicated to intellectual property offenses.

These police IP units conduct criminal investigations with respect to distribution of counterfeits and execute search-and-seizure orders to seize counterfeits.

A successful search-and-seizure will ensure that counterfeit products are removed from the market and may reveal further information and documents related to the channels of importation and distribution, thereby potentially opening additional avenues for stopping the distribution of counterfeits.

The rights owner must obtain evidence regarding the distribution of counterfeits before approaching the police IP units. Such evidence should include a purchased sample of the counterfeit goods. The rights owner may then file a complaint with the IP unit responsible for the region in which distribution of the counterfeits is taking place. The police will then initiate a criminal investigation and conduct a search-and-seizure on the counterfeiter’s premises.

The search-and-seizure will be accompanied by a representative on behalf of the rights owner, who has been authorized to provide an initial opinion on-site regarding the counterfeit nature of the goods. Shortly after the seizure takes place, a detailed opinion explaining why the goods have been determined as counterfeit should be filed with the police, along with the relevant Israeli trademark registration certificates. 

Trademark infringement, copyright infringement, and, as of recently, the infringement of designs registered in accordance with the new Design Law, are typically the subject matter for criminal proceedings.

The importation and distribution of counterfeit goods may amount to a criminal offence according to the following statutes:

• Section 60 of the Trademark Ordinance (New Version), 5732-1972 (which stipulates a penalty of a fine, or up to three years’ imprisonment).
• Section 3(2) of the Merchandise Marks Ordinance 1929, amended (which stipulates a penalty of a fine, or up to one year imprisonment, or both).
• Sections 61-63 of the Copyright Law, 5768-2007 (which stipulates a penalty of a fine, or up to five years’ imprisonment).
• Sections 92-93 of the Design Law, 5777-2017 (which stipulates a penalty of a fine).
• Section 23(1) of Consumer Protection Law, 5741-1981 (which stipulates a penalty of a fine, or up to one year imprisonment).

The burden of proof is the burden required in a criminal proceeding, which is particularly strict — beyond any reasonable doubt.

Practical tips

The police IP units are an excellent resource for seizing counterfeits in the marketplace. By utilizing police resources, rights owners may conduct raids and seize counterfeit goods in an efficient and cost-effective manner, without having to file a civil ex parte search-and-seizure application, for which costs are considerably higher.

Furthermore, a criminal investigation by the police could lead to filing of an indictment against the counterfeiter, creating a deterrent for other counterfeiters, who may not want to risk criminal charges. 

Rights owners can obtain productive cooperation from the police by duly supporting the police in a professional manner with all the necessary evidence and other documents and certificates required when filing a complaint and provide the police with opinion reports regarding the counterfeit nature of the goods in a timely manner, as well as support for the criminal proceedings, if initiated, to the extent required. 

A civil action with respect to importation and distribution of counterfeits may be filed based on the causes listed in the following statutes: 

• Trademark infringement under the Trademarks Ordinance (New Version), 5732-1972.
• Passing off under the Commercial Wrongs Law, 5759-1999.
• Copyright infringement under the Copyright Law, 5768-2007.
• Design infringement under the Design Law, 5777-2017.
• Consumer deception under the Consumer Protection Law, 5741-1981.
• Unjust enrichment under the Unjust Enrichment Law, 5739-1979.
• Misappropriation of Goodwill.

Civil proceedings related to distribution of counterfeits, if conducted in full, may take about two years. In practice, most such proceedings are finalized at an early stage, by way of a settlement.

The Magistrate’s Court or the District Court are authorized to hear civil enforcement proceedings. The plaintiff should evaluate, even roughly, the value of the remedies to be sought. When the sum of the action is lower than ILS 2.5 million, the assigned court is the Magistrate’s Court, otherwise (or when the damage cannot be estimated), the case would be assigned to the District Court. In most cases, proceedings related to distribution of counterfeits are assigned to the Magistrate’s Court.

The relief sought in a civil action with respect to distribution of counterfeits usually includes:

• A Permanent Prohibitory Injunction — an order prohibiting any counterfeit activity (including import, sale, marketing, distribution, production, advertising, storage, and so on).
• Destruction of the counterfeits.
• Receipt of details and documents related to the importing/manufacturing/distributing of the counterfeits.
• Receipt of an accountant’s report on the volume of importing/sales of the counterfeits.
• Compensation for damages considering the report on the volume of sales.
• Compensation without proof of damage with respect to passing off, up to ILS 100,000 under section 13 of the Commercial Wrongs Law, 5759-1999.
• Compensation without proof of damage with respect to copyright infringement, up to ILS 100,000 under section 56 of the Copyright Law, 5768-2007.
• Compensation without proof of damage with respect to design infringement, up to ILS 100,000 under section 75 of the Design Law, 5777-2017.

In the event of an urgent need to stop the importation and distribution of counterfeits, it is possible to file a motion for interim injunctions. It is also possible to apply for an ex parte interim order, as well as an Anton Piller-type order for a search-and-seizure. Such a petition should be accompanied by evidence in the form of an affidavit. 

However, as explained above, utilizing police resources to promptly seize counterfeits, and using Customs measures to stop counterfeit goods at the port of entry, as will be explained below, are efficient and cost-effective methods, therefore applying for an ex parte interim order or Anton Piller-type order is usually unnecessary.

Parallel importation is not prohibited per se according to Israeli law. 

There are certain limitations on parallel importers, to prevent “free-riding”, trademark dilution, and unjust enrichment. These limitations were summarized in CA 7629-12 Swissa v. Tommy Hilfiger Licensing LLC, November 16th, 2014, in which the court set criteria for permissible truthful use of a trademark by parallel importers, as follows:

• The ‘identification’ test: whether it is possible to identify the goods without referring to the trademark.
• The ‘necessity of use’ test: the extent to which use of the trademark is necessary.
• The ‘sponsorship’ test: whether use of the trademark creates confusion as to sponsorship by the trademark owner.

When it comes to parallel imports, the Supreme Court determined that the most important test is the final one listed above, namely, whether consumers may be confused in assuming that there is a connection between the seller and the manufacturer, and whether the consumer is aware that the goods purchased may not be under the manufacturer’s warranty.

Criminal proceedings have the effect of creating a deterrent to other counterfeiters and relaying a strong message. In addition, with the assistance of the police it is possible to seize counterfeit products in an efficient and cost-effective manner. On the other hand, only a low percentage of criminal cases end up with the filing of an indictment and criminal proceedings. 

Practical tips

The best way for rights owners to protect their IP rights is to consistently monitor the market, and swiftly take enforcement measures to stop the importation and distribution of counterfeit goods, thus deterring other counterfeiters, who may not want to risk criminal charges and civil actions. These actions also create awareness of the existence of a counterfeiting problem in relation to a particular product or brand among law enforcement authorities.

Criminal and civil enforcement measures can be conducted simultaneously. Combining police search-and-seizures with civil proceedings against apprehended counterfeiters with civil proceedings, has proven to be effective and fruitful. Such actions deter counterfeiters from further importation and distribution of counterfeits and relay a strong message to other counterfeiters to cease their illegal activities.

There are no new or improved methods observed as being used by counterfeiters.

As part of the general trend of increased online purchasing rather than in brick-and-mortar stores, the selling of counterfeit goods via online platforms has become more widespread.

There have not been any changes made for rights holders in recent years.

Not applicable. 

In the absence of separate legislation regulating online distribution of counterfeits or online trademark infringement, the use of a mark online is treated the same way as other trademark use. 

In other words, the causes of action, measures and remedies employed for offline distribution of counterfeits are also applicable to online counterfeit distribution.

In C.A. 63470-05-10 Zohar v. Facebook Inc. and others, the Tel Aviv District Court held that offering products for sale through the scheme of a “hidden link” is unlawful, as it aimed to camouflage trade of counterfeits. In this case, Diana Zohar promoted Adidas counterfeits through a sophisticated method intended to mask the true nature of a counterfeit product offered for sale on the internet, and to conceal it from automatic search engines. The branded product displayed on her website was published for purchase on AliExpress, but when clicking on the link to AliExpress, the product on sale was a generic and non-infringing product, thus evading counterfeit technological detection tools. Diana Zohar served as the party connecting between the counterfeit seller and the consumer. The court stated that the purpose of the scheme using hidden links is to conceal the sale of counterfeits to bypass digital enforcement measures, which allows brand owners to detect and stop counterfeit activity on the internet. The court ordered Diana Zohar to pay damages and costs to Adidas, and to cease advertising and marketing products bearing the Adidas trademarks. Diana Zohar filed an appeal. 

The Trademark Ordinance (New Version) 5732-1972 does not specifically address infringement made online, but rather refers to infringement in general, regardless of where the trademark was illegally used. 

The actions taken against an online infringer that also has a physical storefront, are identical to those that would have been taken had the infringer only had a brick-and-mortar store, regardless of the quantities or types of goods involved. If proceedings are initiated against such a counterfeiter, the lawsuit will be filed regarding the distribution of counterfeits in both channels, both online and in the physical storefront.

Recently, it has become possible to register within the registry of the Israel Internet Association (ISOC), a domain name in Hebrew, using the suffix “ישראל.” (.Israel). It enables use of a brand name or a word registered mark in Hebrew, within a domain name.

The process of registration of domain names is technical, and the ISOC does not check whether the desired domain is also a registered trademark. Naturally, the new available options for domain names appeal not only to rights owners, but also to infringers who might wish to confuse customers by operating a website using brand names and trademarks in their URL (similar to domain names in English). Moreover, there is a phenomenon of domain owners who intentionally purchase a variety of domain names which include brand names, trying to get the rights owners to approach them and purchase from them the domain name using the brand name or registered trademark.

The ISOC provides IL-DRP, an alternative dispute resolution procedure intended to provide an expedited resolution to disputes regarding the allocation of Domain Names under the .IL ccTLD in accordance with the Rules for Allocation of Domain Names under .IL. 

In recent years, counterfeits have increasingly been offered for sale on social media such as Facebook and Instagram in Israel. In Israel, as in other jurisdictions, it is possible to approach Facebook and Instagram (in accordance with their policy), requesting removal of the pages offering counterfeits for sale. This is mostly done through online brand protection services for companies. However, this could be insufficient in stopping such illicit activity, since the offender may simply open a new account and continue selling counterfeits. Rights owners are encouraged to attempt to make a sample purchase in order to establish the identity of the person/company behind the activity and location of the goods, and then take measures, such as those detailed above, to stop counterfeit distribution.

In May 2024, the Ethics Committee of the Israel Bar Association published an initial memorandum (Decision Eth\24\60) containing directives for use of AI within the legal work of an attorney, aiming to shed light on the ethical risks involved, and emphasizing that AI should be used cautiously, and that each attorney should exercise discretion in each case, and consider the relevant circumstances.

Generally, the memorandum states that the information provided by AI tools must not replace, even partially, attorneys’ professional discretion.

It is likely that the information within the AI tools is not current, not legally precise, and sometimes even completely incorrect. Moreover, the proficiency of AI tools in the Israeli jurisdiction (which is in Hebrew), is predicted to be narrower than in English-speaking jurisdictions. 

Thus, attorneys are obliged to carefully check the AI’s output, including finding the relevant references. A failure to fulfil these obligations might be considered as breach of the duty of loyalty and devotion according to section 54 of the Bar Association Act, 5721-1961 and rule 2 of the Bar Association Rules (Professional Ethics), 5746-1986. 

Moreover, the memorandum states that attorneys must guarantee their clients’ privacy and secure their information from any leakage.

The memorandum distinguishes between two types of AI: generic open tools and dedicated AI tools.

Generic open tools are tools that are open to use by the public, whether available upon payment, or free of charge. 

AI tools, based on a large learning model, store and use the users’ input. Therefore, inserting clients’ information leads to inherent risk of violation of attorney-client confidentiality. Hence, the Israel Bar Association instructed attorneys to avoid inserting clients’ personal information and even secondary information (for example, information regarding technology, a unique business model etc.). They should also be cautious about inserting into the AI tools clients’ copyright protected information.

Furthermore, attorneys might take into consideration the rapidly developing capabilities of AI tools, which might, someday, be able to recognize clients’ identities and their secrets, based on marginal information only.

The Israel Bar Association instructed attorneys to use generic open tools only for general, theoretical queries. The memorandum states that confidential materials/non-public documents/non-public court documents, and any information considered to be personal according to the Privacy Protection Law (even if the customer’s name and ID are deleted), should not be inserted into the open AI ​​systems.

Before using generic open AI tools, attorneys must obtain the client’s explicit written consent for such use, referring specifically to the type of documents, the security measures the client demands be activated, clarifying that the attorney will act in a way that protects the client’s confidential information while using AI tools, unless otherwise agreed.

The client’s consent should be specific, instead of inclusive and comprehensive, and clients should be able to withdraw their consent at any time. 

It should be emphasized that when using generic AI tools for a legal search, if the attorneys could not verify the information given in the AI output, they are obliged to inform the court and the other parties that an AI tool was used, including information regarding which tool was used, and which prompt was inserted as input.

Dedicated AI tools are used by a defined, exclusive group of users (for example, an AI tool for a specific law firm). The Israel Bar Association stated that the use of dedicated AI tools is preferred, since they reduce (but do not prevent) the possibility of information leakage. 

However, even when using dedicated AI tools, their use should be carefully considered. There might be cases which should be disclosed to only a few associates within a law firm; the AI tools might reveal the disclosed information to other team members. 

Attorneys must ensure that the AI system providers will be effectively obliged, under a contract, to prohibit sharing the AI systems and their learning products, so they will not be available to other clients of the providers.

There have been no developments or legislation related to deepfakes to date.

There have been no developments relating to crypto technology.

With respect to the streaming of copyrighted content on the internet, according to section 53A of the Copyright Act of 2007, the court may issue an order directed at an “access provider” of the internet, instructing it to limit access to a content source, in whole or in part, if the court is convinced that the content constitutes a violation of copyright when it is made available to the public. 

In addition, if one claims there has been copyright violation through an electronic communication network, and the identity of the person who committed the alleged violation is unknown, a motion may be submitted to the court for the identity disclosure of the alleged infringer.

In actions for copyright infringements, according to the Copyright Act the plaintiff is entitled to receive injunctive relief, either interim or preliminary. In addition, the owner of rights may apply for actual damages (including loss of profits) or for statutory damages. 

According to the Copyright Act, when an infringement is conducted, the court may award the plaintiff, with respect to each infringement, damages without proof of actual damage, in an amount not exceeding ILS 100,000. In awarding damages, the court may consider, among others, the scope of the infringement, its duration, its severity, the actual damage caused, the benefit derived by the defendant from the infringement and the characteristics of the defendant’s activity, the nature of the relationship between the parties, and the good faith of the defendant. 

However, regarding statutory damages related to infringement on the internet, section 56 of the Copyright Act states that statutory damages will not apply where a person who made available to the public on the internet an artistic work that was previously made available to the public, or who allowed another to make available to the public such a work, provided that all of the following were met:

• the infringer ceased the infringement within a reasonable time after receiving notice from the owner;
• the work was not copied from a catalogue, making the work available to the public for sale or licensing purposes; and 
• the infringement was not for a commercial purpose.

There have been no developments in this area.

Under the Customs IP procedure, as set out in section 69A of the Trademarks Ordinance, section 65 of the Copyright Law, section 110 of the Design Law, and section 200A of the Customs Ordinance, the Customs Authorities may detain shipments containing goods suspected of being counterfeit, on their own initiative, or pursuant to a complaint filed by the rights owner.

A complaint filed by the rights owner to Customs, requesting to detain future shipments containing goods suspected of being counterfeit, should include the following:

• A copy of the relevant trademark registration certificate.
• A picture of a sample of the genuine product.
• The importer’s identity and any other available information regarding the counterfeit goods and their origin, such as photos, descriptions, and, if possible, the shipment’s approximate arrival date and the port of arrival of the shipment. 
• An undertaking for indemnification (UFI) to cover possible unjustified damages that may be caused to the importer as a result of the goods’ detention, as determined by a competent court, in which the rights owner undertakes to join legal proceedings regarding the release of the goods, should the importer of the shipment initiate such proceedings against Customs.

In addition to detaining specific shipments pursuant to complaints filed by the rights owners, Customs also conducts random inspections of shipments, and may detain goods suspected of being counterfeit on their own initiative.

Upon a shipment’s detention, Customs notifies the rights owner through the firm indicated as the address for Customs matters, or the address for service for trademark matters in the trademark register, and will provide the rights owner with the option of pursuing one of two procedures, the Customs IP regular procedure or the Customs IP expedited procedure as detailed in the sections below.

Practical tips

Rights owners can help to make these random checks more effective by providing Customs with training sessions. Such training sessions alert officials to the presence of counterfeit goods, raise their awareness of the brand, and teach them how to recognize counterfeit goods. Israeli Customs allow training sessions to be conducted for Customs officials. Such training sessions may be conducted by the rights owners’ representative, or by the rights owner’s local attorney. 

Customs' IP regular procedure

This is generally implemented in cases of shipments containing large quantities of goods suspected of being counterfeit. 

Customs notifies the rights owner upon the arrival of a shipment containing goods suspected of being counterfeit. The rights owner should then inform Customs as to whether the goods are counterfeit, within three business days (an extension of three business days may be requested). If the goods are found to be counterfeit, the rights owner should file a bank guarantee (bond) in a sum specified by Customs. 

Once the bank guarantee/deposit is filed, Customs will disclose the identity of the importer. In accordance with Customs’ IP regular procedure, the rights owner should subsequently file a regular civil action against the importer (without having to apply for an interlocutory injunction) with the court, within 10 business days from the date the owner received Customs’ initial notice regarding the shipment (an extension of 10 business days may be requested). If an action is filed, the goods will be detained until the end of court proceedings.

In the framework of the regular procedure, the rights owner is responsible for storage and destruction costs. However, in practice, these costs are borne by the importer in accordance with the settlement reached.

Practical tips

While, in accordance with Customs' regular procedure, an action should be filed against the importer, right owners may take advantage of the time before the deadline for filing the action to negotiate a settlement with the importer. 

Such a settlement will not only include the goods’ destruction, but also payment of storage and destruction costs by the importer, an undertaking signed by the importer, disclosure of information and documents regarding the goods’ supplier, and compensation for costs. 

In such cases, the rights owner may promptly finalize the matter without having to file an action, reducing legal costs considerably. In practice, most cases are resolved with a settlement, without filing an action, when this approach is taken.

Customs' IP expedited procedure

Customs may provide the rights owner with the option of pursuing the expedited procedure. The expedited procedure is a shorter process and a more cost-efficient option. However, unlike the regular procedure, when the expedited procedure is implemented, the Customs authorities do not provide the rights owner with details of the importer. Consequently, it is not possible to obtain an undertaking, nor information and documents regarding the source of the goods, from the importer.

Within the framework of the expedited procedure, the rights owner should carry out the following within three business days from receiving Customs’ notice regarding the shipment: 

• Provide an opinion report indicating whether the goods are infringing, outlining brief details of their counterfeit nature.
• Provide Customs with the UFI (as detailed above).

After the requested opinion report and the signed UFI have been provided to Customs, the goods, subject of the shipment will be destroyed. In this procedure, the rights owner is not required to submit a bank guarantee or deposit. 

In the framework of the expedited procedure, the storage or destruction costs are borne by Customs.

Practical tips

When the expedited procedure is implemented by the Customs authorities, the rights owner has the option to choose to implement the regular procedure instead. Namely, when the expedited procedure is implemented, both procedures are available. By following the regular procedure and finding out the identity of the importer, the trademark owner can obtain information on the supplier and marketing chain, as well as obtain an undertaking and compensation for costs from the importer during negotiations as part of the settlement. Therefore, when obtaining such information is of great importance to the rights owner, implementation of the regular procedure can be opted for, although the expedited procedure was implemented by Customs.

Not applicable.

Israel has no national Intellectual Property law enforcement coordination body, however in some criminal investigations, when the need arises, the Israeli Police and the Israeli Customs authorities do cooperate.

6.1 Is it possible to take measures to prevent importing of counterfeits to the Palestinian National Authority? 

Imports into territory under the Palestinian National Authority (PNA) go through Israeli ports and land passages and are subject to Israeli Customs supervision. Border measures may be implemented with Israeli Customs assistance in order to prevent counterfeits from being imported into the PNA (from where they tend to enter the Israeli market).

As such, the importation of counterfeits to the PNA through Israel is considered an infringement of the rights of the owners of registered trademarks in Israel and thus constitutes trademark infringement in Israel.

6.2 Is there a Customs' recordal service in Israel?

A separate service for trademark recordal at Customs does not exist as such in Israel. As explained above, it is possible to approach the Israeli Customs authorities with respect to the importation of counterfeits by a specific importer. In addition, Israeli Customs regularly detain shipments which include products that are suspected of being counterfeit, on their own initiative, and approach the trademark owner representative for customs matters. In the absence of a Customs' recordal service, it is highly recommended to conduct Customs' training sessions, thereby increasing Customs officials’ awareness of counterfeits being imported into Israel. 

No further updates to mention here. 

Not applicable.