Window infringement case gives clearer view of design law

In Mifromal Industries Jerusalem v Klil Industries Ltd (Case 7125/98), the Supreme Court has dismissed an appeal against a District Court of Tel Aviv decision, which found that the defendant had infringed the plaintiff's registered design for profiles of aluminium windows. In so doing, the Supreme Court clarified the test for establishing infringement of registered designs.

Mifromal Industries Jerusalem, an Israeli company involved in the manufacture of building materials, owns a registered design for profiles of a particular type of window with an aluminium frame. It brought an action against a competitor - Klil Industries - for its use of a similar design for its windows. The District Court of Tel Aviv found in favour of Mifromal and Klil appealed.

The Supreme Court dismissed the appeal holding that Klil had infringed Mifromal's rights in its registered window design. In so doing, the court clarified the law relating to registered designs and set out a number of principles to help courts to determine whether a registered design has been infringed.

Some of the most important principles include the following:

• An assessment of infringement must be determined by the eye alone. The 'relevant eye' is the eye of a consumer who has an interest in the design of the particular product he or she is purchasing.
  
  
• It is for the trial court to determine the identity of the relevant consumer. Generally, he or she is an average or reasonable consumer who purchases the product without making meticulous examination or a comparison between products on the market. However, there may be cases where the specific nature of the product will mean that an expert in the field is the relevant consumer and comparison between designs must be made through his or her eyes.
  
  
• Courts must also examine the nature of the products that are to be compared. They should take into consideration the normal conditions for their sale and use.
  
  
• Comparison must be made to determine whether an alleged infringing product constitutes an obvious imitation of a product protected by a registered design. This comparison must be made by examining the products as a whole, as they are perceived through the eyes of the relevant consumer, while assuming that the consumer's examination is not as meticulous as that of an expert, but at the same time, is not as superficial as that of an accidental passenger.
  
  
• If there exists similarity in the overall look of the products, courts should assess whether the relevant consumer would be mistaken as to the identity or origin of the alleged infringing product.
  
  
• Where there is a risk of confusion between the products at issue, courts should regard this as an indication of infringement, notwithstanding any visual differences between the products.
  
  
• The risk of confusion test is an auxiliary test borrowed from the laws of passing off and trademark. It should be used to establish the dominant visual features of the registered design - features that the relevant consumer retains in his or her mind.
  
  
• In assessing whether differences between the products at issue are substantial, it may be of assistance to look at them separately as well as in comparison.
  
  
• Courts must also take into account the scope of protection that is afforded to the registered design. For example, if it is highly novel or original, it should receive a higher level of protection. Thus, in cases where a court holds that a registered design lacks novelty or originality, it may be more likely to find that slight differences introduced by another party into a similar product are sufficient to counteract claims of infringement.

David Gilat, Reinhold Cohn & Partners, Tel Aviv