15 Nov
2019

Protecting and enforcing design rights: Israel

Naschitz Brandes Amir & Co

Legal framework

Industrial design rights in Israel are governed by the Designs Law 5777-2017 (7 August 2018) and the Designs Regulations 5779-2019. Industrial design rights registered in Israel before 7 August 2018 are still governed by the Patents and Designs Ordinance 1924. Non-industrial design rights are governed by the Copyright Law 5768-2007.

Israel is a member of the Paris Convention for the Protection of Industrial Property.

The Ministry of Justice has announced that Israel has acceded to the Hague Agreement for the International Registration of Industrial Designs and will start operating by it as of 3 January 2020.

The new legal design rights framework has enacted two regimes:

  • registered design rights; and
  • unregistered design rights (not dissimilar to European Community registered and unregistered design rights).

A registered design right is subject to substantive examination by the designs commissioner at the Israel Patents Office (ILPO), while the fate of unregistered design rights is determined by a court of law.

Unregistered designs

Unregistered design rights enjoy protection subject to:

  • novelty (global novelty requirement);
  • distinctive character; and
  • a product, subject of the design, being commercially offered or publicly distributed in Israel, including by way of the Internet, by the design owner or someone on the owner’s behalf, within six months of the first publication in Israel or abroad, of the design or a product bearing the design.

Initial publication, including online publication, includes:

  • publicly advertising the design;
  • public distribution of a product bearing the design; and
  • offering for sale a product bearing the design.

Excluded subject matter for unregistered designs can be found under the exclusions applied to registered designs.

Unregistered design rights provide a three-year protection term beginning on the initial publication in Israel or abroad.

Within 12 months of the first publication the owner of the unregistered design may apply for its registration and the application will enter the examination phase in the same was as a regular registered design right application.

Ownership of an unregistered design right is as per the ownership presumptions regarding a registered design right. As far as an unregistered design right is concerned, the person who first published the design, either by themselves or by someone on their behalf, in Israel or abroad, will be deemed the design owner until proven otherwise (in an appropriate motion to the court).

An unregistered design right provides its owner with the exclusive right to prevent any other person from producing for commercial purposes a product which is a copy of the design. Such copying may be deemed to produce an identical product or a product bearing a different design which gives a general impression that the informed user does not perceive to be different from the general impression given by the product subject to the unregistered design right.

Registered designs

A design right may be registrable if it is:

  • novel (global novelty requirement); and
  • has distinctive character.

The following are excluded from eligibility:

  • a design which disparages public order;
  • the appearance of the product or part thereof bearing the design that is solely dictated by the function of the product;
  • the appearance of the product or part thereof bearing the design that is solely intended to be connected or incorporated into another product or that the other product is to be incorporated therein (ie, a ‘must-match’ or a ‘compatibility’ requirement); and
  • the appearance of the product or part thereof bearing the design that is solely the result of the manufacturing requirements dictating form and dimension aspects necessary for a product’s function (ie, a ‘must-fit’ or ‘operability’ requirement).

The must-match and must-fit exclusions relate to issues of spare-part design and manufacture.

A registered design right provides for a maximum 25-year term of protection from the date of the first application. Annuities are to be paid every five years.

The Designs Law provides a 12-month grace period following the first publication of a design. Such a grace period runs parallel to the 12 months within which an unregistered design right owner may turn to the registration route.

The official fees involved in the filing for registering a design are relatively low. The current filing fee for an application for one design in one class is NIS400 (approximately $110), and for an application for a design system in one class it is NIS600 (approximately $160). Certain reductions are available for small and medium-sized entities. Certain additional fees may apply depending on the path of the prosecution and annuities will be due on renewal.

Procedures

An application for registration of a design may be filed by the owner of that design at the ILPO.

The application may be filed on paper or online via the ILPO website.

An application may include several designs, although it may be necessary to divide the application during examination.

An application must include the following:

  • the design owner’s name;
  • the correspondence address in Israel;
  • for each design included in the application:
    • an explanation regarding how the applicant became the owner (eg, by way of creation, purchase, assignment or action of law, among others); and
    • the class and sub-class in which registration is requested; and
  • an ample image description of the design.

The description of the design can include:

  • photographs;
  • drawings; and
  • computerised imaging.

There is no minimum amount or limitation on the number of images used for the description, as long as the design is wholly described in the images. If a product has various positions which are exercised in its regular use, the applicant may include images of such positions, although interim positions (eg, an image in transition between positions) should not be included.

Animated designs of a graphical mark (eg, a computer icon or a screen display) may be considered subject matter of an application. Animation should be demonstrated by a sequence of images showing the animation.

The description may use various types of dashed or broken lines, as long as the purpose of each type is articulated. Such lines may be used to disclaim parts of the product, although they should not be used to indicate hidden parts or aspects of the product.

The use of a textual description in the application is limited to the image characteristics evident in the design.

Images may include colour; although if such colour is not part of the design, it should be stated as such.

Israel is not a member of the Locarno Agreement Establishing an International Classification for Industrial Design. Classification carried out by examiners is done so in accordance with a classification listing included in the addenda to the Designs Law, which is in effect similar to the titles and subtitles of the Locarno Classification.

Priority may be claimed in accordance with the Paris Convention, provided that a claim of priority is made within six months of the filing date of the prior foreign application (as per the Paris Convention). Priority may be claimed from a Hague System application, which is deemed as a Paris Convention prior application.

By default, applications are published on filing. The full docket is subject to public online viewing. Applicants may request deferred publication of the application of up to six months after the first prior application.

Substantive examination is carried out in accordance with the filing queue order. Expedition of examination may be applied for subject to the payment of an expedition fee (NIS250 (approximately $70)) in cases of:

  • advanced age or medical disposition of the applicant;
  • alleged infringement of rights if registration is granted;
  • considerably long examination time in comparison to other applications filed on the same date; and
  • other circumstances which may justify expediting the examination.

The ILPO has published an administrative notice whereby maximum terms are undertaken for completing:

  • formal examination within 10 days after date of filing;
  • first examination within 12 months after date of filing; and
  • continued examination within 22 days after the applicant’s response.

The time taken for the first examination was much shorter in 2018 and was on average below 5.5 months after the date of filing. The overall average time in 2018 from filing to grant (including the time that the applicant took to respond) was 7.75 months.

As a rule, an applicant may respond to an office action within three months of its receipt. Extensions are available, subject to the payment of a prescribed fee.

The examiner substantively verifies that the applied-for design qualifies with the terms of eligibility. Substantive examination is carried out by searches of the ILPO database and proprietary databases, as well as with the general public. An applicant who is denied registration by an examiner may appeal to the commissioner of designs, who will issue a reasoned decision once the applicant has been heard.

Once deemed eligible, the design will be registered and the applicant will receive a certificate of registration.

Any person may apply to amend the register. The designs commissioner may do so once the owner of the design has had the opportunity to be heard.

An owner of a registered design, or any joint owner subject to the consent of all other owners, may apply for the cancellation of revocation of the registration. In such an event, the commissioner will decide once the application of cancellation or revocation is published on the ILPO website.

Any person other than the owner of the registration may file for its revocation on the following grounds:

  • the design was ineligible for protection as a registered design under the law;
  • the application for registration was not made by the design’s true owner; and
  • two applications were made for same or substantially similar designs and the earlier application was not granted.

The commissioner presides over the revocation procedures which are adversarial, including each party submitting its statements of arguments and evidence. Such evidence is to be made by affidavits made by relevant affiants who may be subject to cross-examination. The commissioner will eventually issue a reasoned decision accepting or denying the revocation. The decision should address the matter of costs.

Where annuities are not paid on time, the registered design right will lapse and cease to be recorded in the register. Lapsed rights may be reinstated by application to the designs commissioner within six months. Owners requesting reinstatement will need to demonstrate that timely payment was not made, despite all reasonable precautions being taken under the given circumstances.

Any person adversely affected by decisions made by the commissioner may appeal to the District Court within 45 days of said decision. The District Court’s decisions may be appealed to the Supreme Court subject to receiving leave to appeal.

Enforcement

Registered and unregistered design rights are enforced by filing suit with a court of law.

Protection of unregistered design rights will be enforced subject to the infringer’s knowledge or constructive knowledge that its actions are or should be deemed infringing. Such actions include:

  • sale and lease, including proposal of sale or lease, in a commercial manner;
  • possession of a holding in order to perform said actions;
  • distribution on a commercial scale; and
  • importation into Israel not for personal use.

There is a presumption of knowledge where the product bearing the unregistered design is marked in accordance with the instructions outlined in the Designs Regulations. Such marking requirements regard the actual marking and the circumstance in which it should be made (eg, sale or display). Where a registered design is concerned, the mere registration creates an assumption of the infringer’s knowledge.

The owner of a registered design right has the exclusive right to carry out the following actions:

  • production, sale or lease, including the proposal for sale or lease, of a registered design product, in a commercial manner;
  • distribution on a commercial scale or importation into Israel other than for personal use (except for parallel imports); and
  • holding a registered design product for the purpose of performing any of the acts listed above.

A person exploiting a registered design, alone or through another party on their behalf, after the publication date of the application for registration and without the registered design owner’s permission, infringes the registered design.

Infringement of a design right is a tort liable to damages.

The plaintiff is entitled to an injunction order in a design infringement action unless the court finds reasons justifying refraining from issuing such an order.

In addition to said remedies of damages and injunction, the court may award the plaintiff compensation without proof of damages of up to NIS100,000 (approximately $28,000). In determining such compensation, the court may consider the following, among other things:

  • the infringement’s scope;
  • the infringement’s severity;
  • the actual damages caused to the plaintiff;
  • the nature of the infringer’s actions;
  • the nature of the relationship between the parties (if one exists); and
  • the infringer’s good faith while taking into account the variety of options available when designing products in the relevant field.

The court may require the provision of an account of the details of the infringement, delivery of the infringing products or their destruction, and the performance of an act with respect to the means of manufacture of the infringing products to prevent future infringement.

A person commercially exploiting a registered design during the course of business, by means of manufacture or the import of a design identical to a registered design and without the registered design owner’s permission, is criminally liable to a fine of up to NIS75,300 (approximately $21,000).

Under certain conditions, the customs officer may delay the release of goods that are suspected to infringe a registered design and to treat them as goods which are prohibited from import by the Customs Ordinance.

Ownership changes and right transfers

By default, unless stipulated otherwise in the Designs Law or between the parties, the designer is the first owner of a design right.

The Designs Law provides for a ‘service design’, whereby a design made by an employee is deemed to be owned by the employer.

Where a design is commissioned, the commissioner of the work is deemed the owner of the design. The applicant of a registered design right is presumed to be the owner of the right until proved otherwise (an appropriate motion can be made to the designs commissioner).

Design rights may be assigned in whole or in part. An agreement for the assignment of design rights must be in writing (although this requirement is merely of a declaratory nature) and evidence duly showing the existence of an oral agreement would likewise be effective. The assignment of rights in a registered design will have effect only for the parties to the agreement or a person who knew of the assignment, unless such an assignment was duly recorded in the registry. The parties to the assignment of registered designs (including pending applications for registration) may apply to register the rights to reflect the rights in the design.

Related rights

According to the Copyright Law, copyright will subsist in, among other things, artistic works affixed in any form. However, copyright will not subsist in ‘designs’ as defined in the Designs Law, unless the design is not used or intended for use in industrial manufacture. Nevertheless, in the recent Supreme Court decision Fisher Price Inc v Devron Import & Export Ltd (CA 1248/15, 31 August 2017), it was held that original works should not be denied copyright protection merely because they appear on a product eligible for design protection.

A product may be protected under both the Designs Law and the Patent Law. However, features of a product dictated solely by technical functionality will not be protected by a registered design.

Trademarks can be two-dimensional or three-dimensional (3D). The general opinion of the courts prior to the enactment of the new Designs Law is that the appropriate way to protect a 3D design of products or their packaging is by registering them as designs, although parallel trademark registration may also be possible.

Naschitz Brandes Amir & Co

5 Tuval St

Tel Aviv 6789717

Israel

Web http://www.nblaw.com

Asa Kling

Partner

[email protected]

Asa Kling chairs Naschitz Brandes Amir & Co’s IP practice, handling litigation and registration prosecution in courts and before the Israel Patent Office. Before joining the firm, Mr Kling was director of the Israel Patent Office and Commissioner of Patents, Trademarks and Designs (2011 to 2017). As commissioner, he presided over hundreds of adversarial proceedings concerning issues of IP rights’ validity and registration. During his tenure, Mr Kling led several reforms in Israeli IP laws, such as the new Israeli Designs Law. He is a regular speaker at many international fora, teaches IP law in several academic institutes and has extensively researched artificial intelligence and big data implications on IP law.