Designs in Israel are protected by the Patent and Design Ordinance that was last amended in 1937, and by the Design Regulations of 1925. Clearly a new design law is long overdue.

In a quirk of the Law, dating back to the British Mandate and never updated, designs in Israel require local novelty only. In circular M.N. 69, from December 2008, the Commissioner of Patents Dr. Meir Noam extended this to include designs published on the Internet and available from Israel. There are no unregistered design rights but parties may be able to claim damages and to obtain injunctions under the Law of Unjust Enrichment where a design appears to have been copied.

At the end of 2009 there were three decisions that, taken together, clarify Israel's design law.

Patent Office Publishes Decision on Curb Stone Design

In a cancellation proceeding regarding Israel Design Number 39519 to Ackerstein Ltd., Wolfman Industries Ltd. has succeeded in cancelling a design for a curbstone.

The Law (Section 36 of the Patent and Design Ordinance) allows third parties to initiate design cancellation proceedings where a design was published in Israel prior to registration.

To register a design for an object, it is necessary to show views from all sides. This case relates to the design of a curbstone which is generally viewed from the front and top. Consequently, a publication of a single perspective view from the top, front direction considered sufficient to render the design known, making it non-registerable.

Background

On April 14, 2004, a representative of Ackerstein Ltd. apparently discussed the design at a closed meeting where a representative of Wolfman was present. This was before Ackerstein filed their application on July 25. The day after the meeting, Yoval Winter, a Wolfman employee found the design on a website belonging to Brett Group and Profilebiton. Apparently the design had been on the site since 2001.

Noah Shalev Shmulovits, the Arbitrator of Intellectual Property and Assistant Commissioner ruled that under Israel Law both the meeting and the Internet publication constituted publication.

The assistant commissioner ruled that the design registration was void and further awarded Wolfman NIS 30,000 in costs.

For more details on this case see The IP Factor blog.

Temporary Injunction Against Copycat Challah Cover Manufacturers

Karashi International Ltd. is a leading manufacturer of mass-produced Judaica with some 1,800 products, and 200-300 new products annually. One of their most successful lines is a series of challah and matzah covers, for covering ritual leavened and unleavened bread respectively. Karashi's covers have the words "Shabbat" or "Yom Tov" (Sabbath or Festivals) embroidered on a translucent material, within a contrasting, opaque framework.

One of their clients ordered a large quantity directly from the manufacturer in China. Karashi sued for IP infringement.

Since the products were conceived for mass production they are not protected by copyright. They could have been protected by filing for registered designs but Karashi failed to do so. The main grounds for requesting an injunction were Unjust Enrichment and Passing Off.

In his decision, Judge Yosef Shapira of the Jerusalem District Court reviewed the legal precedents he considered relevant and issued a temporary injunction against the defendants, forbidding them from marketing their challah and matzah covers with the words Shabbat and Yom Tov on a translucent material surrounded with opaque borders. The ruling forbids sales in Israel or abroad which makes these non-registered design rights extra-territorial.

Comment

After the Supreme Court upheld the A.Sh.I.R. decision* in 1994, there are unregistered intellectual property rights available in Israel under the doctrine of unjust enrichment, at least where the court is convinced that the copying was intentional.  

This case is discussed in depth on The IP Factor blog.

*A.Sh.I.R Decision. The Israel Supreme Court allowed plaintiffs to claim against "infringers" under the Rule of Unjust Enrichment in cases where there were no registered IP rights. The decision is controversial as it undermines the need to register designs, patents or trademarks and unlike registered rights with clear guidelines and durations, the nature of unjust enrichment is more open to judicial interpretation.

So What if the Israel Patent Office Refuses Revival Of Design Applications?

In March 2008, Zippi Honey Ltd. filed a series of design registration applications (45607 through 45611) for a variety of items. Since design applications do not formally publish in Israel and are not available for inspection until three years after filing, the nature of the goods whose protection was sought can not yet be disclosed. They may have been honey containers, spoons or other related items.

According to Section 31 of the Design Regulations, the applicant has 12 months from filing to complete the design registration. The applicant in this case failed to do so, ignoring letters and reminders from the Israel Patent Office. As there were five designs, it appears that the Patent Office sent out a total of 10 letters.

More than a year later, after engaging a lawyer to operate on their behalf, the applicant took steps to revive the design application, noting that one of the designs was being copied and that they had even received a temporary injunction against the alleged infringer. IP Judicial Review Officer Shoshani Caspi rejected this revival attempt as there was no indication that the Israel Patent Office was at fault in any regard in this case.

For more information see The IP Factor blog.