Case management procedures report

The Israeli law does not contain specific provisions dealing with the management of trademark-related cases, as distinct from the management of civil actions in general. Nevertheless, Israeli law and practice contains provisions that assist in furthering and expediting proceedings. These provisions equally apply to trademark cases. Referred below are the relevant provisions.

• 
  In many cases, the Court recommends that the parties refer to alternative dispute resolution mechanisms, such as arbitration, mediation and empowering the court to award a judgment by way of settlement (namely – without reasoning). However, in practice, such alternative mechanisms are hardly used in trademark-related cases.
  
• 
  Regulation 369 of the Civil Law Procedure Regulations, 1984 (“the Regulations”) empowers the Court with the authority to order that the time for hearing an action to be advanced, instead of hearing an application for provisional remedies filed in the framework of such action, if the Court concluded that this can make the hearing more effective and save the Court's and the parties' time. In practice, this Regulation is more often applied in patent-related cases rather than trademark cases.
  
• 
  Subject to the parties' consent, the Court may order that the decision in an application for provisional remedies will serve as a judgment in the main action. In practice, the parties tend to agree to such procedure, as in any case, most trademark-related cases are determined de facto according to the decision in the application for provisional remedies.
  
• 
  According to Regulation 373 of the Regulations the Court shall render its decision in the application for provisional remedies when the hearing of the application ends, and at latest within 15 days after the hearing ended.
  
• 
  There is no automatic right of appeal on a decision rendered in an application for provisional remedies and a leave to appeal must first be requested.
  
• 
  Regulation 241(d) of the Regulations entitles the Court to render a decision based on the written application and any response thereto, without the need for cross-examining the affiants on behalf of the parties. However, in case that a party insists on cross examinations, the court must accede to such request.
  
• 
  According to the Trade Marks Ordinance [New Version], 1972 a trademark's registration certificate constitutes prima facie evidence as to the validity of the trademark. Based on this provision, it was held in case law that where an application for interim remedies is based on a registered trademark, the court will usually not deal with the issue of the validity of a trademark in such stage.
  
• 
  In addition, the Courts tend to limit the scope of examinations, arguments and summations, and thus contribute to expedite the proceedings.
  

1. Court Structure

South Africa has four distinct hierarchies of Courts: the Magistrates Courts, the High Courts of South Africa, the Supreme Court of Appeal and the Constitutional Court, each of which is governed by its particular Rules of Court.

Generally, the Magistrates Courts deal specifically with matters that fall within the scope of the Magistrates Court as detailed in the Magistrates Court Act and include criminal matters and civil matters with a monetary jurisdiction of less than R100,000 (one hundred South African rands – approx. US$14,000).

The High Court is divided into thirteen geographical divisions. These divisions have general jurisdiction over defined geographical areas in which they are situated, and their decisions are binding on Magistrates Courts within their areas of jurisdiction. The High Court divisions have jurisdiction over all matters in their geographical area, but have exclusive jurisdiction over intellectual property matters including trade marks, patents and designs in which interdictory relief, such as preventing the infringement of a registered right or common law right, is sought.

The Supreme Court of Appeal functions only as a Court of appeal and may decide on any matter on appeal, and is, except for constitutional matters (where the Constitutional Court is the ultimate Court), the highest Court of appeal.

2. Procedures in trade mark matters - overview

a. Relevant Tribunal

In broad terms, recourse can be had either to the Courts or to the Registrar of Trade Marks.

For trade mark oppositions, recourse must be had to the Trade Marks Registrar.

For trade mark cancellations, the interested party can have recourse either to the Trade Marks Registrar or to the High Court.

In the event the infringement of a registered trade mark, or of a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark, relief may be sought from any High Court having jurisdiction (competence) to hear the matter. The High Court may also be approached for relief for the unauthorised use of a mark which has not proceeded to registration on the basis of the laws of “passing off.”

b. Procedure

South Africa does not have procedures dedicated solely to trade mark infringement matters, and the general laws of civil procedure apply. Accordingly the aggrieved party will have to approach the High Court in the prescribed manner for the enforcement of trade mark rights and related disputes. The standard period within which a matter could be finalized ranges from two to four years.

The conduct of Court proceedings in South Africa is regulated in accordance with the Uniform Court Rules. These rules are applicable in all divisions of the High Court and are often supplemented by practice directives which may vary from division to division. The purpose of these directives is to speed up the litigation process.

c. Case Management

In the spirit and purpose of the rules, the Courts do have the discretion to alter the time-limits imposed by the rules and/or to condone any non-compliance with the rules depending on relevant circumstances before the Courts.

The Courts have traditionally not played an active role in case management. The role of the Courts has been limited to ensuring that legislated procedures and time lines are followed and to passing judgment on the merits of disputes.

Arbitration and mediation is available to parties to a dispute, but only by agreement. Although Judges are empowered to explore the possibility of referring the matter to alternative dispute resolution, the Courts play no role in arbitration and mediation and these mechanisms are used only if both parties have agreed that dispute resolution will be resolved in this way in a prior written agreement or if, after the dispute arises, both parties indicate their preference to take the arbitration route. This happens very seldom in trade mark disputes.

3. Costs

The general rule applicable to the costs of legal proceedings is that the unsuccessful party is usually required to pay the so-called party and party costs of the successful party. Such costs are the parties’ reasonable costs calculated in accordance with an official standard tariff and they generally amount to approximately 30% - 50% of the parties’ actual costs.

A foreign litigant may be required to provide security for legal costs in legal proceedings, unless immovable property is owned in South Africa.

4. Procedure Before the Trade Marks Registrar

Proceedings before the Registrar of Trade Marks are similar in nature to Application proceedings in the High Court of South Africa (dealt with in section 6 below).

The Opponent is required to file a Notice of Opposition in which its grounds of opposition are briefly set out and this notice is accompanied by an Affidavit setting forth and providing evidence in support of the grounds of opposition.

The Trade Mark Applicant will then have one month from the date of the Notice of Motion to file its Notice of Intention to Oppose.

If the Trade Mark Applicant decides to oppose the Application it will have a further two months to file its Answering Affidavit.

The Opponent will then have one month to file its Replying Affidavit (if any).

Any of the aforementioned time periods may be extended with the consent of the other party and, if the other side refuses to consent to the extension, the party requiring an extension must apply to the Registrar for condonation.

b. Closing of Pleadings and Hearing

As soon as the evidence has been filed, the Pleadings will close and the matter will be set down for a hearing before the Registrar of Trade Marks. Unfortunately, due to a backlog at the Trade Marks Office, delays of several months are currently being experienced before an actual hearing date is allocated.

Once a hearing date has been allocated, counsel (which is the South African equivalent of a barrister) will be required to prepare and file heads of argument (based on the papers filed and the relevant case law) 10 days prior to the hearing date.

The matter is argued before the Registrar on the papers filed. There are no witnesses or cross-examination and there are no prescribed conferences between the parties.

Once the arguments have been heard, the Registrar will consider the matter and hand down the ruling. Delays of at least several months are, unfortunately, also being experienced before a ruling is received due to the backlog at the Trade Marks Office.

Usually proceedings before the Registrar will follow the course outlined above. However, the proceedings could be delayed in circumstances where the Trade Mark Applicant requests discovery of certain documents before being able to provide its answering Affidavit.

The proceedings are stayed until such time as the requested documents are discovered. If the Opponent disputes the necessity to discover certain documents, the Trade Mark Applicant can file an interlocutory Application to compel discovery.

5. High Court Proceedings

Proceedings before the High Court of South Africa are heard before a Judge - South Africa does not have a jury system. Because South Africa subscribes to an adversarial system of law where the role of the Court is primarily that of an impartial referee between the disputing parties, the Applicant / Plaintiff has the election, based on the circumstances of the matter to either bring a Action or Application before the Court as there is a large amount of party control in civil matters and the matters are administered by the parties to a great extent.

Proceedings in civil litigation before the High Court take on two forms, namely:

(i) the Action procedure, where there is a dispute of fact and where oral evidence is heard at trial; and

(ii) the Application procedure which is argued on the papers put before the Court and set out the facts and evidence upon which the parties’ claim or defence is based.

In instances where the Action procedure is applied, the litigating parties are referred to as the Plaintiff and Defendant. In Application proceedings the parties are known as the Applicant and the Respondent.

An Application is less costly and more expeditious than a trial Action, but is inappropriate to decide real and substantial disputes of fact which fall for decision by trial Action. The basic test is whether there is a substantial dispute of fact. Broadly, in trade mark proceedings, an Application will be used for obtaining an interdict (injunction), while trial Action will be used for a damages claim.

It is possible to bring both forms of proceedings, for example an Application for an interdict against infringing activity, which will be heard by the Court relatively quickly, and then an Action for damages resulting from such infringement.

These two proceedings are dealt with in more detail in sections 6 and 7 below. The distinction between the Action and Application procedures and the most important differences are briefly indicated below:

ACTION	APPLICATION
Parties are called Plaintiff and Defendant.	Parties are called Applicant and Respondent.
Deals primarily with a substantial factual dispute.	Dispute is of such a nature that it can be dealt with on the papers before the Court.
Commences with the issuing of Summons by the Plaintiff.	Commences with the issuing of a Notice of Motion and supporting Founding Affidavit by the Applicant.
Further Pleadings are exchanged by the parties and include: The Defendant’s Plea (response) and counterclaim; The Plaintiff’s Reply to the Defendant’s Plea; and The Plaintiff’s Plea to the Defendant’s Counterclaim.	Further Affidavits are exchanged, including: Opposing Affidavit by the Respondent; and The Replying Affidavit (if applicable) by the Applicant.
After the exchange of Pleadings, a stage called the preparation for trial follows. Certain preparatory steps are then taken such as the discovery of documents and expert notices.	There is no written preparation for trial stage.
The Action procedure ends in the trial Court where mainly oral evidence by the parties and their witnesses is presented.	The Application procedure ends in the motion Court. In principal no oral evidence is presented and the parties do not testify. The case is argued by the parties’ legal representatives on the papers before the Court.

Applications are brought in one of two ways:

(i) on notice to the Registrar of the High Court, and any other person affected by the Application (dealt with below); or

(ii) on notice to the Registrar of the High Court only, where no other person is affected.

The Applicant commences proceedings by issuing a Notice of Motion, which is drafted by an attorney. briefly setting out its grounds of complaint and the relief sought. This notice is accompanied by a Founding Affidavit setting forth and providing evidence in support of the grounds of the Application.

The Notice of Motion serves to inform the Respondent and the Court that an Application will be made on a specified date to the specified Court and the legal relief set out therein will be requested. To be valid, the Notice of Motion must comply with the relevant rules contained in the Rules of Court, and must, amongst others, set out the identity of the parties, nature of the Application and the relief sought as well as appoint an address at which the Respondent can serve documents in the matter.

The purpose of Founding Affidavit is to record the facts of the matter under oath. Although there is not standard prescribed form for a Founding Affidavit, it should generally contain the name and addresses of the Applicant and Respondent, the fact that the Court has jurisdiction, the material facts upon which the Application is based as well as any evidence in support thereof and a request that the Court grants the relief set out in the Notice of Motion.

The Notice of Motion is issued at the High Court in order to obtain a case number and to open an official file at the High Court. Once the case number has been obtained the document must be served by a Sherriff on the Respondent.

(2) Respondent:

(i) The Respondent has 5 days from the date of service of the Notice of Motion to file its Notice of Intention to Oppose.

(ii) If the Respondent fails to file its Notice of Intention to Oppose within the prescribed time period, the Applicant may apply for a hearing date 10 days after the date of service.

(iii) If the Respondent files its Notice of Intention to Oppose, it has 15 days within which to file its Answering Affidavit wherein the Respondent answers the Applicant’s allegations set out in the Founding Affidavit, as well as sets out the basis of any Counterclaim.

The Applicant then has 10 days to file its Replying Affidavit (if any), Replying to or addressing any allegations contained in the Respondent’s Answering Affidavit.

b. Closing of Pleadings and Hearing Date

If either of the parties fails to file the required documents within the prescribed periods, the other party may apply for a hearing date within 5 days of the date on which the other party was required to file the relevant document.

Once the aforementioned documents have been filed, Pleadings close and the Applicant may apply for a hearing date within 5 days.

If the Applicant fails to apply for a hearing date within the prescribed period the Respondent may apply for a hearing date immediately on expiry of the time allowed for the Applicant.

Once again, as with proceedings before the Registrar, any of the aforementioned time periods may be extended with the consent of the other party and, if the other side refuses to consent to the extension, the party requiring an extension must apply to the High Court for condonation.

A hearing date is allocated immediately based on the nature of the proceedings and depending on the backlog at the High Court. Hearing dates in opposed matters are currently expected to be between 9 months and one year from the date of requesting the hearing date.

Once a hearing date has been allocated, an advocate (which is the South African equivalent of a barrister) will be required to prepare and file heads of argument (based on the papers filed and the relevant case law) 10 days prior to the hearing date.

At the hearing date the matter will be argued before a Judge on the papers filed. There are no witnesses or cross-examination and there are no prescribed conferences between the parties. The arguments presented by the parties’ advocates are limited to the submissions contained in the Affidavits, meaning that as a general rule oral evidence is not heard.

Once the arguments have been heard, the Judge will consider the matter and hand down the ruling. The Judge renders a decision on the basis of the evidence and documents submitted by the parties and presented by the parties’ advocates (legal representatives) in Court.

There is no obligation on a Judge to hand down Judgement within a specific time period, but the High Court Judges endeavour to hand down judgments as soon as possible, and have, on occasion, been known to do so immediately on conclusion of the hearing of an Application. However, delays of at least several months are also being experienced before a judgment is received.

d. Discovery

Application proceedings may be delayed in circumstances where the Respondent requests discovery of certain documents before being able to provide its answering Affidavit.

In such circumstances, the proceedings are stayed until such time as the requested documents are discovered. If the Applicant disputes the necessity to discover certain documents, the Respondent can file an interlocutory Application to compel discovery.

7. Action Proceedings

Action proceedings are usually initiated in circumstances where there is an actual dispute of fact between the parties. This means that the matter cannot be resolved on the papers filed and oral evidence by way of cross-examination of witnesses is allowed. These proceedings would not usually be used in trade mark matters.

Trade mark matters ordinarily require a Combined Summons which has the Particulars of Claim annexed to the Summons setting out the material facts.

b. Pleadings Stage

A Pleading is a document wherein substantial facts upon which a party’s bases its claim or defence. The allegations contained in a Pleading are not made under oath and this, do not amount to evidence. At the trial a party must present oral evidence to prove and/or substantiate the factual allegations made in the Pleadings.

The Action commences with the issuing of a Summons by the Plaintiff, accompanied by the Particulars of Claim, which sets out the basic cause of Action and relief sought.

The Summons is a process of Court that is drafted signed and stamped by the Plaintiff or his attorney and is issued by the Registrar or the Clark of the Court, as the case may be, wherein the matter is allocated a case number, and served on the Defendant by a Sheriff.

The Summons is issued at the High Court in order to obtain a case number and to open an official file at the High Court. Once the case number has been obtained the document must be served by a Sherriff on the Defendant.

(I) The Defendant has 10 days from the date of service to file its Notice of Intention to Defend.

(II) If the Defendant fails to file its Notice of Intention to Defend within the prescribed time period, the Plaintiff may request the Court to grant Default Judgement.

(III) If the Defendant files its Notice of Intention to Defend, it has 20 days within which to file its Plea. The Defendant sets out its defence to the Plaintiff’s claim in the Plea, which is a paragraph by paragraph Reply on the merits of the Plaintiff’s claim as set out in the Summons.

(iv) If the Defendant brings a counter claim against the Plaintiff, the Counterclaim will accompany the Plea. This is often referred to as a Claim in Reconvention and the Plaintiff acts as the Defendant in reconvention and vice versa.

The Plaintiff has 15 days from the day of service of the Defendant’s Plea to deliver its Replication (if necessary). The Plaintiff must respond to any Counterclaim by filing a Plea, which is referred to as a Plea in reconvention (essentially the Pleading procedure will then fall into two categories, the first being the main Pleading in relation to the Plaintiff’s Claim in Convention and secondly the ancillary Pleading based on the Defendant’s Claim in Reconvention).

Further Pleadings may be delivered by either party within 10 days but are seldom required in practice.

(3) Closing of Pleadings and Trial Date

Once Pleadings have closed, the matter will be set down for trial but the trial date will once again depend on the backlog at the High Court.

In Action proceedings, counsel (which is the South African equivalent of a barrister) will not only be required to prepare and file heads of argument (based on the papers filed and the relevant case law) prior to the trial date, but will also be required to attend a Pre-Trial Conference (discussed in paragraph f below), and consult with relevant witnesses in cases where oral evidence will be led.