Trademarks

  • At S. Horowitz & Co., we recognise that a brand can be a cornerstone of profitability, but that it is only as strong as the team protecting it.  We work hard to ensure that our clients’ brands, marks and reputation are protected. Indeed, our work has been recognised by World Trademark Review, where our trademark practice has not only been ranked as one of the top tier firms in the country but is also described as being “one of the most muscular litigation forces in Israel”.

     

    We advise the owners of some of the most famous and recognisable brands in the world, and often working in tandem with foreign counsel as part of a global trademark enforcement or defence team.

     

    Our services encompass the full range of trademark prosecution and enforcement, including representation before the Israel Trademark Office for trademark clearance, registration, licensing and transfer, foreign trademark registration and oppositions to and cancellation of trademark registrations, litigation before the various courts involving the enforcement of registered and non-registered trademarks, anti-counterfeiting and brand protection, including coordinating with law enforcement authorities, Israeli customs authorities, police and other government agencies to facilitate the seizure and destruction of counterfeit goods, portfolio management, brand clearance advice, licensing and exploitation and domain name registration and management, including combating cybersquatting.

    • Representing Raytheon Company against an opposition to its application for the registration of the "PAVEWAY" trademark, filed by its rival Lockheed Martin, as part of an ongoing worldwide dispute between the parties concerning the "PAVEWAY" mark, one of the largest trademark disputes ever to reach the Israeli courts
    • Representing the Pharmaceutical Division of the Manufacturers’ Association of Israel on various life science matters, including advice concerning trademark aspects with regard to the registration of pharmaceutical products with the Israeli Ministry of Health and issues relating to the packaging and labelling of such products
    • Representing Luach Yediot Achronot Ltd., an operator of a classified website and a subsidiary of Yediot Achronot Ltd. (Israel's largest media group) in two corresponding proceedings before the Registrar of Trade Marks as well as the District Court, with respect to the validity and alleged infringement of the "Yad2" (the Hebrew equivalent of the term "2nd Hand") trademark registered by another classified website operator
    • Representing Polar Music International AB, the Swedish company with the rights to the catalogue and accompanying IP rights of the super-group ABBA, in an opposition to an application for the registration of the "ABBA CADABRA" trademark, before the Israeli Trademarks Office
    • Representing Allergan Inc., the world’s largest specialty pharmaceutical company developing and marketing eye and skin care, in a series of trademark infringement cases involving its anti-wrinkle injections, following which the BOTOX™ trademark was recognised for the first time as a well-known trademark, and separately the reassignment to Allergan of its Hebrew BOTOX domain name from a bad-faith registrant
    • Representing BDO International Ltd., the fifth largest accountancy network in the world, in an international trademark dispute concerning the use of the logo and word "BDO" by Banco de Oro Unibank, the largest bank in the Philippines (which has a presence and a registered trademark in Israel), including acting for BDO in proceedings in Israel for the cancellation of the trademark issued in the Bank's favour
    • Representing Anheuser-Busch Corporation of the United States, the world’s biggest beer producer, in the Israeli litigation forming part of the worldwide trademark dispute over the name "Budweiser"
    • Representing Perrigo Israel Pharmaceuticals Ltd., a subsidiary of the U.S. based Perrigo Company Inc., a major manufacturer in the field of generic pharmaceutical products, in litigation concerning infringement of trade marks and trade names and other IP-related causes of action
    • Administering and prosecuting Aroma Espresso Bar Ltd.’s (largest franchisor in Israel) trademark portfolio, involving the filing, prosecution and registration of dozens of applications for trademarks in Israel, and in up to 20 jurisdictions worldwide, including in the United States, Canada, European Community, Japan, China, India and New Zealand in connection with the Aroma Espresso Bar and Marrone Rosso trademarks
    • Dealing with ongoing and regular trade mark prosecution work, as well as providing DreamWorks Animation SKG, Inc. (the renowned Hollywood animated motion pictures studios) with clearance opinions regarding the translation into Hebrew of the titles of their motion pictures
    • Representing Trump Drinks Israel LLC, part of the Trump organisation, in a dispute with Pixel Trading (2009) Ltd., concerning a breach by the latter of an agreement for the use of a Trump trademark in the field of alcoholic beverages and the payment of royalties for such use
    • Representing La Compagnie Vinicole Baron Edmond de Rothschild S.A., in a dispute with an Israeli winery operated by S.C. Vigneronne des Grandes Caves Rishon Lezion, Zichron Yaakov Ltd. and Carmel Mizrahi Ltd. concerning the use by the winery of the name "Rothschild" in connection with wines marketed by Carmel Mizrahi
    • Representing a large number of foreign companies in trademark registrations and protections, including ICI, Toyota, Lego, Philips, Hasbro and Marc O' Polo