- Introduction. 2
- Definitions. 2
- What is a design?. 2
- What is an Article?. 3
- A registered design. 4
- A non-registered design. 5
- Assignments and licensees. 7
- A Registered Design. 9
- Filing an Application. 9
- Publication of application. 10
- Amendments to application by applicant 11
- Examination of application. 11
- The Rights of the proprietor of a registered design. 11
- A non-registered design. 12
- Infringement of a design. 13
- Who can sue?. 14
- Eligible defenses against an infringement lawsuit 15
- Relief for infringement – Civil Procedings. 15
A registered design is a statutory monopoly of up to 25 years duration intending to give protection to the aesthetic appearance, but not the function, of the whole or parts of an article, excluding typeface and computer software.
The new Design Act 2017, (hereinafter “The Act”), replaced the old Patents & Designs Ordinance 1924, (hereinafter “The Ordinance “), is effective as of Aug. 7, 2018, (hereinafter the “Effective Date”).
The Act, which has been inspired from the European and British design laws, has adopted a modern approach for design protection. One of its main goals is to bestow small businesses and independent designers effective tools to protect their designs
The Act provides that ‘design’ means the feature or features of shape, configuration, pattern or ornament which are applied to an article or a part thereof. The features may be of two-dimensional decoration or three-dimensional form, which give to the article, to which the design has been applied, visual impact in addition to the appearance of the basic article.
Basically, it is not the article which is protected by the Act but the design which is applied to it.
According to the Copyright Act 2007, A design-article which is not an industrial design and is not intended to be used in industrial manufacturing, may be protected under the Copyright Act.
There is no requirement that the article to which the design is to be applied must be made in one piece or from a single material. An article may be made up of parts which are fitted together (‘a set of articles’).
A set of Articles shall be eligible for protection under the Act if:
- They are of the same kind;
- Their visual characteristics are different from one another by unsubstantial parts;
- They are usually offered for sale or intended to be used together as a whole.
In many cases the article is composed of composite articles. If the parts of a Set of Articles intend to be used or offered for sale individually, then it is not a Set of Articles under the Act.
An article may also be a packaging, a graphic symbol, a screen display but not typeface or computer software.
The Act introduces two kinds of designs: a registered design and a non-registered design.
According to the Act, the essential requirements for registrability are:
- The design must have unique characteristics and be new (art. 3).
- The design must not be offensive to the public order.
A design shall be considered ‘new’ if, prior to priority date, a similar design or, such that is different in immaterial features, has not been publicly published in Israel or abroad. Presenting the design to another person by its proprietor shall not be considered as ‘public publication’ of the design, if the person to whom it was presented agreed, directly or indirectly, not to reveal the design.
Public publication of the design shall not prevent its registration if it was performed in the course of 12 months prior to priority date by the proprietor of the design or as a result of information originating from the proprietor, whether the information was legally or illegally obtained.
A design shall be considered as having ‘unique characteristics’ if it is not commonplace, meaning that the overall impression that an informed user gets of the design is different from what he gets of another similar design, that has been publicly published prior to priority date. This overall impression shall take into consideration the range of possibilities to design such articles belonging to the specific field of the design-article in question.
A non-registered design shall be eligible for protection under the Act if it meets the following criteria (art. 4):
- The non-registered design must have unique characteristics and be new;
- The non-registered design was offered for sale or was commercially distributed to the public in Israel by the proprietor of the design-article or by someone on his behalf, including via the Internet, within six months of priority date, which, when concerning non-registered designs means, the date when the proprietor or someone on his behalf has first publicly published the design or the design-article in Israel or abroad.
- Notwithstanding the above criteria, if Israel is party to an international convention obligating the protection of non-registered designs, then foreign non-registered designs shall be protected in Israel under the Act. Such protection shall not exceed the protection of non-registered designs that meet the above criteria, unless otherwise agreed upon in the convention and according to the agreement.
- The non-registered design must not be offensive to the public order.
The following characteristic shapes of a registered or non-registered design-article shall not be protected by the Act:
- The shape of a design-article, or part thereof, is dictated solely by the function of the article to which the design has been applied, (‘material’ shape).
- The shape of a design-article, or part thereof, is dependent upon the shape of another article with which it is intended to form an internal part or, that other article is intended to be an internal part in the design-article, and for that matter, the design-article must be manufactured exactly in the shape and measurements to enable such integration. (‘Must match’ shape).
The original designer is the first proprietor of his design, unless otherwise indicated in the Act. The designer is the person who conceived the features which are incorporated in the design. He must have chosen the shapes, lines, textures and colors, if any, of that which is sought to be registered. As in copyright of an artistic work, a person who gives general instructions to another for the creation of a design is not the designer. The question arises in cases where a design is generated by computer in circumstances such that there is no human author. As in the law of copyright, the person by whom the arrangements necessary for the creation of the design are made shall be taken to be the designer. If a design is created jointly by more than one designer, all of them shall be considered joint designers.
Where the designer-author creates a design in course of his employment for his employer, or the designing is part of employee’s responsibilities at work, with employer resources, (hereinafter “A Service Design”), the employer shall be treated as the original proprietor, unless otherwise agreed between the employer and the employee. Such an agreement, like in Copyright and Patent laws, should be in writing. In case of dispute as to the nature of the design as a Service Design, the parties or, anyone on their behalf, may apply to the Registrar for a decision in the dispute.
Where the designer-author creates a design under a commission either for money, money’s worth or even for free, the commissioner is treated as the original proprietor, unless otherwise agreed between the parties. Such an agreement, like in Copyright and Patent laws, should also be in writing.
In case of a registered design, whoever is registered as the proprietor of the design in the Registry is presumed to be the lawful proprietor.
In case of a non-registered design, whoever first published the design to the public, either by himself or by anyone on his behalf, in Israel or abroad, shall be regarded as the proprietor of the non-registered design, unless proved otherwise.
Rights in a design may be transferred from the original proprietor to another person (including a lawful entity), in whole or in part, by assignment, transmission or by operation of law. That person can own the right either alone or jointly with the original proprietor.
The proprietor of a design may grand exclusive or non-exclusive licenses to exploit the design.
For an assignment of rights and an exclusive license to be valid against third parties, they must be in writing and be recorded in the Register. It does not apply to the parties to above contracts or to any other person who has actual knowledge of the assignment or the exclusive license.
The assignee, the assignor, the licensee and the licensor of a registered design or of an application to register a design have the right to apply to the Registration office to record the assigned or licensed rights in the Register.
“Exploiting a registered design” shall mean: having an exclusive right to perform any or all the exclusive acts restricted by the Act to the proprietor, as herein under detailed.
“Exploiting a non-registered design” shall mean: having an exclusive right to prevent others from commercially exploiting the non-registered design, as herein under detailed.
“An exclusive License” shall mean: A license granting the licensee the sole right to exploit the design, as agreed upon in the license, thereby limiting the exploitation rights of the proprietor of the design himself to exploit the design and to grant licenses to others to exploit the design.
The proprietor of a design may apply to the Registration Office to register the design.
An application to register a design should be filed either manual or electronically in accordance with the Design Rules 2018.
If two or more applicants have separately applied for registration of a same design or a design similar in its essential features, the first to apply shall be entitled to be registered as proprietor of the design in the Register.
The applicant must state to which article or set of articles the design is to be applied and that he claims to be the proprietor of the design in relation to that article.
If the design is owned by more than one proprietor, (‘joint proprietors’), each one of the joint proprietors has the right to apply for registration of the design in the name of all joint proprietors naming each joint proprietor and notifying the joint proprietors in writing of the application.
Each joint proprietor has the right to waive his rights in the design by notifying the Registration office and his name shall be erased from the application.
If the application includes more than one design, examiner is entitled to divide the application into more applications, so that each application shall apply to one design only.
The priority date of an application is the date the application was submitted to the Registration office in Israel or, a parallel application was submitted to a Registration Office in a Paris Convention Country (‘Foreign Application’).
The priority date of a Foreign Application may be applied for in Israel if:
- The parallel application was filed with the Israeli Registration Office within six months of priority date of the Foreign Application, in accordance with the instructions of the Convention.
- The application to acknowledge the priority date of the Foreign Application was filed on time and it complies with the Rules.
- A true and certified copy of the Foreign Application was submitted with the application.
The priority date of an application might be changed if the application contains major faults.
The applicant shall be notified of the faults and given a period of 21 days to correct the faults and amend the application.
The Registration Office shall publish the application for registration of a design, including its visual description, in the Internet site of the Registration Office as close to date of submission as possible. The applicant may request to postpone the publication for up to six months from submission date.
Applicant may apply for entering amendments in the application till the date of registration, provided that the amendments do not contain essential alterations of the design.
A single or a joint applicant may withdraw from the application till the date of registration. In case of a joint applicant, consent of the other joint applicants to the withdrawal is mandatory.
The Registration Office examines the application to ensure that it meets all the statutory requirements, e.g. whether it is really a ‘design’, whether it is to be applied to an ‘article’ or a ‘set of articles’, whether it has sufficient novelty, whether its appearance is ‘material’ within the provisions of the Act and whether it offends against the ‘must match’ provisions.
An applicant may request to precede the date of the examination if he meets the provisions of the Act.
Once all the statutory requirements are met, the Registrar issues to the proprietor a certificate of registration and the registration is entered into the Register and published in the Internet site of the Registration Office.
Upon registration, a design shall confer on its holder the exclusive right to use the design or a similar design that gives the overall impression of the registered design (‘similar design’) and to prevent any third party not having his consent from using a design or a similar design included within the scope of protection of the design right, (‘exploitation of the design’).
Exploitation of the design shall cover, in particular, the commercial making, selling, renting, offering for sell or rent, putting on the market or using of a product in which such a registered design is incorporated or to which it is applied, or importing (apart for private use), or stocking such a product for those purposes without the consent of the proprietor of the registered design.
The duration of the above exclusive rights is 25 years from priority date.
An eligible non-registered design proprietor shall have the exclusive right to prevent others to commercially manufacture an article bearing a design which is a copy of the protected design, whether the copy was performed by manufacturing an identical article bearing the protected design or performed by manufacturing an article bearing a different design but the overall impression of that different design gives an informed user an overall impression of the protected design, (‘a similar impression’).
The decision whether there is a ‘similar impression’ shall take into consideration the existing range of possibilities to design articles belonging to the specific field of the design-article in question.
A proprietor of a non-registered design believing that his non-registered design is eligible for protection as a non-registered design under the Act shall have the right put an authorized mark on the article bearing the design, indicating that it is a non-registered design and its priority date.
A proprietor of a non-registered design may, within 12 months of priority date, apply for the registration of the non-registered design.
The duration of protection of a non-registered design is three years from priority date.
Whoever exploits a registered design, either himself or via third party, after the date of publication of the design, without the consent of the proprietor, infringes the right of the registered design.
Whoever exploits a non-registered design, either himself or via third party, after priority date, without the consent of the proprietor, infringes the right of the non-registered design.
Whoever performs any of the following acts in a non-registered design, performs an indirect infringement of a non-registered design if, when performing the act, he knows or has reason to believe that the article is an infringing article:
- Commercial selling, letting for hire, offering for sell or hire;
- Having in possession for performing any of the above acts;
- Commercial distribution;
- Importing into Israel for commercial purposes.
Presumption of Knowledge: When proprietor of a non-registered design puts a warning sign on the protected design-article, it is presumed that, whoever exploit or performs any of the above acts in the non-registered design, knows that its owner believes that his non-registered design is eligible for protection under the Act as a non-registered design.
- The Act gives the proprietor of a design the right to sue for infringement of his rights in the design.
- An exclusive licensee, whose rights according to the license agreement are recorded in the register.
- An exclusive licensee who has a valid license agreement, but his rights have not yet been recorded in the Register.
- In case of Joint Ownership – each of the co-owners may sue for infringement.
A lawsuit for infringement of a registered design may be filed only after the design was granted and registered.
Although the Act provides that, no proceedings shall be taken, in respect of an infringement committed, before the date on which the certificate of registration of the design is granted, the Act further provides that once the lawsuit was filed, the court may provide remedies for infringements committed before registration was granted, but after the date of publication of the design application.
Nevertheless, it does not prevent the proprietor of an application for a design to take proceeding in respect of an infringement committed to a non-registered design before registration is granted.
Any cause for annulling the registration of a design is a good and valid defense against an infringement lawsuit of a registered design. If the Court is convinced that the defense applies, he shall order the removal of the registered design from the Register or, order the correction of the Register so that it reflects the correct rights in the design.
A claim that a non-registered design was not eligible for protection under the Act, is a good and valid defense against an infringement lawsuit of a non-registered design.
Infringement of a design is a civil tort and the provisions of The Torts Ordinance [New Version), (hereinafter “Torts Ordinance”), shall apply, with the necessary adaptations.
Therefore, the successful plaintiff in an infringement action shall be entitled to the usual relief by way of injunctions, damages and delivery up.
Although an injunction is a natural relief in intellectual property actions, in case of an infringement of a design, the court may find justifying grounds for denying an injunction.
In addition to the relief of damages in the Torts Ordinance, the Act adopted the relief of Statutory Damages, like in the Copyright Act and other similar Acts, like, Defamation Act the Privacy Act etc. This relief is new, and it shall apply to design applications and infringements proceedings filed after the effective date.
In case of an infringement of a design, the court may order, upon plaintiff’s request, Statutory Damages limited to up to 100,000 NIS for each act of infringement, without the need to prove the actual losses suffered by plaintiff.
Whereas, damages according to the Torts Ordinance, although having no limit, the losses must be proved. Where there is no loss, there is no relief of damages.
When Statutory Damages are ordered, in order to determine the amount of compensation, the court may take into consideration the following facts:
- The extend of the infringement;
- The severity of the infringement;
- The actual losses that the plaintiff has suffered, as estimated by the court;
- The benefit gained by the defendant from the infringement;
- The characteristics of the act of infringement;
- The nature of the relations between the plaintiff and the defendant;
- Bona fides of the defendant, regarding the variety of possibilities to design articles in the same category.
- The Court may order, after considering the severity of the infringement, the damages/losses to the design owner and the interests of other persons who are not party to the proceedings, the delivery up of offensive articles to the plaintiff, if he so requests, for destruction.
- If the court finds that the offensive articles may be of use to the plaintiff, the court may order the plaintiff to pay for them to the defendant.
- The Court may order the delivery up of property which its main function is to manufacture the offensive articles, in order to prevent the continuation of the infringing acts.
- The Court may order the delivery up of offensive articles from third parties who have not themselves infringed the design.
A proprietor of a registered design who believes that his rights have been infringed or, that there is a reasonable probability that they might be infringed by importation of offensive articles, may apply to the Custom Authorities requesting to detain the release of the suspected articles and forbit their import into Israel.
A bona fide infringer shall not be ordered to pay damages if he did not know or had no reason to believe, at the date of infringement, there are rights in the design.
The is a presumption of knowledge if the design is a registered design and if a non-registered design had a warning sign.
Whoever commercially exploits a registered design without the consent of the design owner in one of the following manners, commits a criminal act and shall pay the penalty prescribed in the Penalty Act 1977:
- Manufactures a design-article, which is identical to the registered design.
- Imports a design-article, which is identical to the registered design.
An officer of a corporation must supervise and take any necessary action to prevent the above criminal actions of the corporation and/or its employers. Failing to do so, he shall pay the penalty prescribed in the Penalty Act 1977.
According to the Act the duration of protection of a registered design shall last 25 years from date of filing the application in Israel, subject to payments of renewal fees.
A registered design which was filed prior to Aug. 7, 2018, according to the Ordinance, shall be entitled to a further protection period of 3 years , subject to payments of renewal fees.
Israel shall be party to the Haag Convention on Aug. 7, 2018 when the Act is in effect.
As of that date The Convention and its Rules shall be part of the Act.
 At least two articles.
 This are two of the innovations of the Act.
 We shall introduce the two kinds of designs separately, and when further discussing the Act, we shall point the differences between them.
 As opposed to “novelty’ & ‘originality” in the Ordinance.
 Meaning: immoral or illegal.
 Date of application
” Publicly published” means, the design was published to the public including via internet, the designed-article was distributed to the public or the designed-article was offered to the public for sale.
 A change from the requirements in the Ordinance, where ‘new’ meant that the design has not been publicly published in Israel. Although in recent years, the courts have considered “publicly published in Israel” to include publication on the internet, as well.
 “Informed user” is a person who is interested in the design-article in order to use it and is familiar with the variety of existing designs in the specific field of the design-article.
 The Ordinance did not protect a non-registered design. A non-registered design article has been (and still is) indirectly protected under the laws of unfair competition and overall get up.
 Original author of a design.
 The requirement of a commission for money worth is not part of the requirement of a commissioned design.
 A “Register” means the Design Register managed by the Patent Registration Office.
 Yet to be published. As long as the new Rules are not published, the old Rules shall apply.
 Meaning, the class and subclass according to the Act & the Rules.
 A Country that is party to the Paris Convention for the Protection of Industrial Property 1883, (the “Convention”).
 Like, not including the name of the proprietor of the design, the application does not include a proper visual description according to the Act or, the application fee was not paid.
 The date the design was registered in Register.
 Has a material shape.
 Art. 28(a): old age or health problems of the applicant; someone is exploiting the design without the consent of the applicant; long waiting time or any other circumstances justifying an application to precede.
 An ‘authorized mark’ shall mean the letter in a circle (D) as indicated in the Rules.
“Priority date” for non-registered design means: the date when the proprietor or someone on his behalf has first publicly published the design.
 Secondary infringement.
 “infringing article” – a non- registered article which was manufactured without the license of the non-registered design right owner, excluding articles manufactured abroad with design right owners’ or anyone on his behalf, consent (‘parallel import’).
 The “warning sign” shall include the indication that it is a non-registered design and the date of its first publication (priority date).
 Before the date on which the certificate of registration of the design is granted.
 Whether it was unintentionally, repeated act, etc.
 Licensee, competitor etc.
 This relief is not granted to owners of a non-registered design.
 As opposed to The Ordinance, which allowed a max. duration of 15 years.
 Total of 18 years instead of 15 years as should have been according to The Ordinance.
 Geneva version.
Dr. sarah Presenti, Adv.