Protecting a brand online: legal tools

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What protects your brand, and when someone harms it, what can you do?

Someone opened a website with a name similar to yours. A competing product appears on Google for exactly your words. Someone registered your company name as a domain. These are not theoretical scenarios: they happen all the time, and each of them can be dealt with legally.

The main tool: a registered trademark. The Trade Marks Ordinance [New Version], 5732-1972 gives the owner of a registered mark the right to exclusive use of it for the goods for which it is registered (section 46), and allows them to sue for “infringement”: use, by someone not entitled to it, of the registered mark or of a mark similar to it, for the same goods or goods of the same description (section 1). Whether it is an imitation or an attempt to benefit from your reputation (goodwill), registration is the basis for an infringement claim; an unregistered mark gets this protection only if it is “well known” (section 57).

Has someone stolen your logo? This is where it becomes a legal problem

A website or online store that uses a logo, a brand name or content owned by someone else may infringe two main rights:

• Copyright infringement: the Copyright Act, 5768-2007 protects an original work fixed in any form, including photos and a logo as an artistic work and written content as a literary work (section 4), and the author is its first owner, subject to the rules on a work made by an employee and a commissioned work (sections 33–35). Copying it or making it available to the public without permission is an infringement (sections 11 and 47), even if you credited the source, unless it is fair use (section 19).
• Trademark infringement: unauthorized use of another person’s registered trademark, or of a mark similar to it, for the goods for which it is registered or goods of the same description, whether in the domain name, the website title, product descriptions or the products themselves, is “infringement” (section 1 of the Trade Marks Ordinance). Even a “slightly different” mark may be considered similar if it is likely to mislead the consumer.

Did someone register a domain identical to your brand name? For a domain with a generic extension (such as .com) you can file a UDRP complaint, which is decided without a court, and the remedies in it are limited to canceling the domain or transferring it; for a .il extension, the IL-DRP procedure applies; and you can also sue in Israel for trademark infringement or passing off. The full guide: Domain name disputes: procedures and solutions.

The mark isn’t registered? You still have protection: passing off

The tort of passing off also protects someone who has not registered a trademark: a business may not cause its goods or service to be mistaken for those of another business, or for something connected to it (section 1 of the Commercial Torts Law, 5759-1999). The plaintiff must show reputation in the name, the logo or the description, and a risk that the public will be misled, but registration is not required, and the court may award compensation of up to NIS 100,000 for each tort even without proof of damage (section 13).

A domain that is identical or similar to another business’s mark may also support a passing off claim, if it causes your service to be mistaken for that business’s service; transferring the domain itself is possible in a UDRP proceeding, if the three conditions in paragraph 4(a) of the UDRP Policy are met.

The tools you have when your brand is harmed

A brand owner can take various legal steps to protect their brand online:

• A legal warning (cease and desist letter): a lawyer can send a formal warning letter to the person using the logo or the brand name, demanding that they stop the use within a certain period (usually 10–14 days). Such a letter is a common step before starting legal proceedings.
• A request to remove content (takedown notice): a brand owner can ask web hosting companies, online stores (such as eBay or Etsy) or search engines to remove the infringing content, usually through the platform’s own reporting mechanism; for copyright infringement on American platforms, the DMCA (Digital Millennium Copyright Act) notice-and-takedown procedure is also used. Israel has no general statutory “notice and takedown” mechanism, but the District Court may order an access provider to restrict access to a website whose main content infringes copyright (section 53A of the Copyright Act).
• A lawsuit: a brand owner can file a claim in an Israeli court against the operator of a website or online store, claiming compensation for infringement of a trademark or copyright, or for marketing fraud. In the claim you can ask for an injunction and compensation for the damage caused; for copyright infringement and the tort of passing off, you can also ask for compensation of up to NIS 100,000 without proof of damage, for each infringement (section 56 of the Copyright Act) or for each tort (section 13 of the Commercial Torts Law).

What to prepare before a warning letter or a claim

• An up-to-date extract of the mark’s registration from the Register of Trademarks: the right to exclusive use comes from a valid registration, and it applies to the goods for which the mark is registered (section 46 of the Trade Marks Ordinance).
• Evidence of reputation, if the mark is not registered: how long the name has been used, and the volume of sales and advertising. This is the basis for a passing off claim.
• Proof of ownership of the logo: for a logo commissioned from an outside designer, the first owner of the copyright is the designer, unless agreed otherwise, expressly or by implication (section 35(a) of the Copyright Act); a contract transferring the right requires a written document (section 37(c)).
• Documenting the infringement: screenshots with the date and the URL, and the domain’s registration details.
• Dates: when the infringement started and when you learned of it, for the limitation (prescription) period (sections 6 and 8 of the Prescription Law, 5718-1958) and for an argument of delay (laches).

What is the limitation period for an intellectual property claim, and what happens if you don’t use your trademark?

Intellectual property claims become time-barred, so do not miss the deadline:

• Copyright: the limitation period is 7 years (section 5 of the Prescription Law), and it starts on the day the cause of action arose, as a rule the day of the infringement (section 6); only when the facts were unknown to the plaintiff for reasons beyond their control does it start on the day they learned of them (section 8).
• Trademarks: a claim for trademark infringement is also subject to the general limitation period of 7 years, and in addition a long delay in filing the claim may serve as a defense argument for the defendant. It is advisable to act soon after discovering the infringement.
• Canceling an unused trademark: any interested person may ask the Registrar of Trademarks to cancel the registration of the mark for goods for which it has not been used in good faith in the three years before the application for cancellation (section 41 of the Trade Marks Ordinance), unless the non-use was due to special circumstances of trade. “Register and forget” is not a strategy: keep the mark in active use.