Protecting and enforcing design rights: Israel
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Industrial designs are governed by the new Designs Law 2017, which entered into effect on 7 August 2018 and replaced the old Patents and Designs Ordinance (the ordinance still governs designs filed before the new law’s entry into force).
The following national legislation is relevant for designs filed before 7 August 2018:
- the Patents and Designs Ordinance 1924;
- the Design Regulations 1925;
- the Copyright Law 2007 (Section 7); and
- the Unjust Enrichment Law 1979.
The following national legislation is relevant for designs filed as of 7 August 2018:
- the Designs Law 2017; and
- the Copyright Law 2007 (Section 7).
The Israeli Ministry of Justice recently published a draft of the new Design Regulations. Until the new regulations enter into force, the Design Regulations 1925 will apply, mutatis mutandis.
Israel is a member of the following international conventions and treaties:
- the Paris Convention; and
- the Agreement on Trade-Related Aspects of Intellectual Property Rights.
Israel is not a party to the Hague System; however, the Israeli Ministry of Justice aims to join by the end of 2018.
A design may be protected as an unregistered design if it is new and of individual character, and provided that it was offered for sale or distributed to the public in Israel in a commercial manner, including online, by the design owner or on the owner’s behalf, within six months of its disclosure date to the public, in or outside Israel.
A design will be considered new if an identical design, or a design that differs only in non-essential details, has not been made available to the public before its disclosure date.
Individual character assessment is necessary and is similar to that for registered designs.
The term of protection for an unregistered design is three years from its disclosure date.
Exclusions for eligibility apply and are similar to those for registered designs.
Registered design rights in Israel are obtained through registration at the Israeli Patent Office (ILPO) for a design relating to a product or a part thereof, consisting of one or more visual features (eg, contour, colour, shape, ornamentation, texture or material) and including a set of articles, packaging, graphic symbols and screen display. Design protection does not include typeface and computer software.
A design must be new and have individual character to be eligible for registration.
A design will be considered new if an identical design, or a design that differs only in non-essential details, has not been made available to the public before the application or priority date in or outside Israel (known as the ‘effective date’).
When assessing individual character, designs relating to any type of product – namely, not necessarily limited to the same class as the design’s product – will be taken into account while considering the variety of options available in designing the products in the field that the design product belongs to. Individual character is assessed in the eyes of the ‘informed user’, who is deemed to be a person interested in using the design product and familiar with a variety of designs existing in the field to which the product belongs.
The following are not eligible for registered design protection:
- a design that violates public policy;
- the appearance of a product or part thereof dictated solely by the product function;
- the appearance of a product or part thereof intended to be connected or incorporated into another product or where the other product is incorporated therein (ie, ‘must-match’ features); and
- the appearance of a product or part thereof that must be manufactured exactly in the form and dimensions in which they were produced in order for their function to be performed as stated (ie, ‘must-fit’ features).
Disclosure of a design to the public will not affect its eligibility to be protected as a registered design if it was disclosed during the 12 months preceding the effective date by the design owner or as a result of information originating with the design owner, regardless of whether the information was obtained lawfully or unlawfully.
A registered design is protected for a five-year period from its application date, which is extendable by four successive five-year periods for a total of 25 years.
In order to register a design, the applicant must submit an application to the ILPO that includes:
- the name of the design owner and the address in Israel for service of documents;
- an explanation of how the applicant came to be the owner of the design (eg, by virtue of law or assignment);
- the class and sub-class of the product;
- representations; and
- confirmation of fee payment.
Priority may be claimed in accordance with the Paris Convention, provided that the Israeli application was filed within six months from the filing date of the prior application.
The application, including a visual description, will be published on the ILPO website shortly after its filing. Deferment of publication is applicable for a period not exceeding six months from the application filing date.
A design application must include a set of representations. The representations can be photographs, line drawings or computer-generated images, and must clearly and accurately show the design for which protection is claimed. The representations can be in black and white, greyscale or colour. There is no requirement for a specific number of views, though the representations must leave no room for any assumptions or conjectures regarding the overall appearance of the claimed design. Broken lines, blurring, blackening or lightening may be used to illustrate unclaimed portions of the design. The application may include descriptive text of the visual features of the designs, provided that these features are visible in the representations. Multiple design applications may be filed, but will be divided into separate single design applications, either at the time of filing (if filing fees for each design have been paid) or at the commencement of the examination process (if filing fees for each design have not been paid). An application for a set of articles (ie, articles of the same class, where their visual characteristics differ only in non-essential details and are ordinarily offered for sale together or intended for use together) may be examined and registered as a single application. Protection of such a design is afforded to the set of articles in its entirety, as well as to its constituents.
The examiner will examine whether the design included in the application is eligible for registration and complies with both the procedural and substantive requirements. In the examination, the examiner may rely on documents submitted by a third party, among other things. Based on the current rate of examination, the first examination report on the application’s merits is issued within four to five months. An expedited examination may be requested under certain conditions. The applicant must respond to the examination report within three months from the issue date of the examination report. The examination process must be concluded within 12 months from the date of the first substantive examination report. Extensions are available, subject to payment of the prescribed fees.
If the design has been deemed eligible for registration, the registrar will register it with the Registry, publish its details on the ILPO website – including its visual description – and issue a certificate of registration.
Any person adversely affected by an examiner’s decision or action may appeal before the registrar. The registrar’s decision may be appealed before a district court within 45 days from the decision’s issuance date.
Cancellations and removals from registrar
The owner of a registered design may request the registrar to cancel or remove its own registration. Any person who is not the registered design owner may request the registrar to cancel the registration in the following cases:
- the design was not eligible for registration;
- the application for registration was not filed by the design owner; and
- an earlier application for registration of the same design, or of a design distinguished therefrom only in non-essential details, was pending at the time that the registered design was granted.
The registrar’s decision may be appealed before a district court.
The owner of an unregistered design has the exclusive right to prevent any person from producing for commercial use a product which is an identical copy of the design, or a product which creates on the informed user an overall impression that is not different from the overall impression by the design product.
Unregistered design infringement is established by the following acts:
- sale or lease (including a bid or position for sale or lease) in a commercial manner;
- possession for the purpose of sale or lease; and
- commercial distribution or import into Israel other than for personal use, provided that at the time the act was performed the alleged infringer knew or should have known that the product was an infringing product.
The owner of a registered design has the exclusive right to perform any of the acts listed below with respect to the registered design and any other design creating the same overall impression on the informed user:
- production, sale or lease, including a bid or position for sale or lease, of a registered design product, in a commercial manner;
- distribution on a commercial scale or import into Israel other than for personal use (except for parallel import); 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, after the publication date of the application for registration and without the registered design owner’s permission, infringes the registered design.
Civil action: 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, the court may award the plaintiff compensation without proof of damages of up to $28,000. In determining compensation, the court may take the following, among others, into consideration:
- scope of infringement;
- severity of infringement; and
- actual damages caused to the plaintiff.
The court may require the defendant to provide an account of the details of the infringement. The court may also order:
- the delivery up of the infringing products or their destruction; and
- the performance of an act with respect to means of manufacture of infringing products to prevent future infringement.
In an action due to design infringement, the infringer will not be liable to pay compensation if at the time of the infringement they did not know or did not have to know that rights exist in the design. However, it is presumed that the offender knew that there are rights in the design if the design was registered or, with respect to an unregistered design, if the design was marked under or if an application to register it was published.
Criminal action: A person commercially exploiting a registered design through a business, by means of manufacture or import of a design product identical to a registered design and without the registered design owner’s permission, is liable to a fine of up to $63,000.
Customs detention: Under certain conditions, a registered design owner may ask the customs director to delay the release of goods that are suspected to infringe a registered design and to treat them as goods whose importation is prohibited by the Customs Ordinance.
Ownership changes and right transfers
The designer is the first owner of the design in all but the following circumstances:
- the employer is the first owner of a design if the design was created by an employee during employment or using the employer’s resources (service design), unless otherwise agreed between the employee and employer; or
- the customer is the first owner of a design if the design was custom-made, unless otherwise agreed between the customer and designer.
A person listed in the Registry as the owner of a registered design is considered to be the owner of the registered design unless proven otherwise. The person who first made the unregistered design available to the public, in person or through another party, in Israel or abroad, is considered to be the owner of the design unless proven otherwise.
Right transfers and licensing
Design rights may be assigned in whole or in part. An agreement for the assignment of design rights needs to be in writing (although this requirement is merely of 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.
According to the Copyright Law, copyright will subsist in, among others, artistic works affixed in any form. The term ‘artistic works’ includes works of applied art. However, it is prescribed that copyright will not subsist in ‘designs’ as defined in the Design 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 Davron – 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 Design Law and the Patent Law. However, features of a product dictated solely by technical functionality will not be protected by registered design. In a pivotal Supreme Court decision Sarnoa Ltd v Tnuva Ltd (CA 430/67, PD 22(1) 113 (1968)), the basic test for the non-functionality requirement was set forth: “If the same functional purpose can be achieved with the use of a different design, which is as efficient as the design in question, the functional purpose that the design comes to fulfil does not invalidate the design from registration.”
Trademarks can be two-dimensional or three-dimensional (3D). Registering a certain design as a trademark instead of, or in addition to, registering it as a design is permitted. The general opinion of the courts is that the appropriate way to protect a 3D design of products or their packaging is by registering them as designs.
According to one district court decision, an expired registered design is prima facie not eligible for registration as a trademark, since providing the possibility of registering the lapsed design as a trademark will prevent the public from using that design. This limitation does not fulfil the purpose for which the exclusivity by the design registration was granted.