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A Brief Overview on the Israeli Design Practice
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By Eng. Reuben Berman, Patent Attorney
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 What is a design?
A design is an ornamental element of an object. This is not legal language, rather a comprehensive description of the concept. One form of intellectual property is registered design.
Utility patent laws are directed to protecting non-obviousness / inventive step;
Copyright laws are directed to protecting originality of expression in literary, artistic, dramatic, musical, and recorded creations.
Trademark laws are directed to protecting goodwill of goods, manufacturers, merchants, and service providers.
Design registration laws are directed for protecting novelty and originality in industrial design.
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The Law
The law relating to design registrations is the utility patent and design registration ordinance. In 1967 the patent law was legislated, which annulled all of the clauses relating to utility patents that were in the utility patent and design patent ordinance, but this ordinance remained in force for everything relating to design registrations. In addition, there is a regulation from 1940 that is concerned with procedures, etc. Similarly, paragraph 22 of the 1911 copyright law and paragraph 7 of the 2007 copyright law relate to design registrations.
The utility patent and design registration ordinance states:
A “design” is not defined as something other than images, shape, example, or decoration that distinguish each object by a process or an industrial means, whether by manual labor, by machine, or by chemical action, alone or in combination, clearly visible in finished goods, and it is possible to detect them with unaided eye, but the term does not include any method or basis of construction or anything that is, in principle, just a mechanical device (Utility patent and Design registration Ordinance, paragraph 2).
Wherein:
- “Image lines (in other words descriptive lines), form, example, or decoration” (in other words ornament)
- “That distinguishes every object”, in other words, that contribute to the object to make it “special”. Note that the term “object” is a three-dimensional object. Two-dimensional objects, such drawings, are protected by copyright.
- “By a process or industrial means”, as opposed to, for example, a plastic art-work such as a statue or a one-time drawing
- “By manual labor, by machine or by chemical action” describes a means of production.
- “Alone or in combination”, in other words, manufacture of the design element can be done separately from the object’s manufacture or together with the object’s manufacture.
- “Noticeably visible in finished products, and it is possible to detect them with the unaided eye”, the design element must be visible when looking at the finished product that is delivered to the consumer, and also to attract attention / grab the eye.
- The law also adds: “But the term does not include any method or basis of construction or anything that is in principle just a mechanical device”. In other words, the law does not include anything in the design definition that is imposed by functional considerations, in other words, the function performed by the object.
If we try to summarize, a design, as defined in the law, is an ornamental element of an object, appeals to the eye; it is not defined by functional considerations per se, and is manufactured by an industrial process.
Judge Dr. Amiram Binyamini interpreted this with the following words:
“Paragraph 30(1) of the ordinance determines that it is possible to record “Every new or original design that has not been previously published in Israel”. From this, the conditions needed to allow a design registration are as follows: a) it is new or original; b) it has not been previously published in Israel; c) it includes external styling that is determined in an industrial process; d) the external styling is obvious in the final product; e) it is not a product that is principally a mechanical device.” (partial court ruling from 26 July 2009 in Tel Aviv, 1562/04)
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Examples of objects that can be protected by design registrations
A frame including a decoration, the cone-shaped snack “Apropo” (in other words, the three-dimensional shape of an item of food), “Crocs” shoes, fruits and vegetables, items of clothing, brushes, furniture, cutlery, plates (or the three-dimensional shape of plates or the decoration on the plates), designs on motor vehicles, toys, etc.
Regarding buildings, the architectural plan is protected by copyright. However, it is possible to protect the external shapes of the building by means of a design registration.
An illustration does not qualify for design registration because it is not an object. Similarly, a computer presentation, a film, etc., does not qualify.
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Set of objects
The subject of a design registration can be an object that bears the design or a set of objects that bear the design.
A set of objects is a group of objects similar in nature that are generally sold together or are intended for use together. Cutlery and chess pieces are examples of sets of objects. The design registration request fee is somewhat higher for a set of objects than the fee for a single object.
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Example
 For the design elements in the cellular telephone hand-sets in the picture, it is possible to include the contours of the devices, the shape of the number keys, the shapes of the external buttons, the device colors, etc. Each of the elements that we described catches / draws the eye. Some more and some less.
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Functionality
As mentioned, the law excludes design registration protection for designs that are dictated only by functional considerations. When there is doubt about whether an element is dictated by functional considerations, the following test can be applied: If it is possible to design the element with different forms, then the element is also a design.
This was expressed by the Supreme Court in the following manner:
“We find that if it is possible to achieve the useful objective by using a different design that is no less effective, then the useful objective that the design fills does not disqualify the design from registration. The point is that when there are also other designs that achieve the useful objective, it cannot be said that the design is dictated only by the function, and there is no overlap between the delineations of design registrations and utility patents, because another person can create his own object that performs the same function with the same effectiveness by changing the form without having the design registration stand in his way. (In the case of A.A. Sharnoa Ltd. And Seren Meuhadot Industries Ltd. N. Tnuva, Court decision 22(1)113)
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Regarding the aforementioned example of the two cellular telephone hand-sets, the outlines of the two cellular telephones are different, the external buttons are different, and the color is different. Since it is possible to design each of these elements in a different way, it means that each of these elements is also a design, even if it has a functional purpose.
 And what about the cellular telephone in the picture on the left? Does the separation of the screen from the keyboard constitute a design element? It is obvious that the separation itself is functional, but the question is whether the separation is also a design attribute. The answer is affirmative, that yes, the connection can be made at the upper side of the frame (as shown in the picture), but it can also be made at the lower side, and it could even be made on the right or the left sides. More precisely, an open cellular phone with the opening on the on the right side looks different than an open cellular phone with the opening at the top, like in the picture. Certainly, the difference between the opening on the right is obvious when compared to the opening on top. |
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Novelty Statement
A novelty statement is a declaration of innovation. The design registration applicant is allowed to add a novelty statement to draw the attention of the examiner / public to the design elements of the design registration. Sometimes, the examiner requires the design registration applicant to indicate the novelty / originality of the design element in the design registration, in other words, to make a novelty statement.
Examples of novelty statement wording:
- The novelty of the design is in the game handle
- The novelty of the design is in the outline of the mug
- The novelty of the design is in the shape of the rhombus of the buttons
- The novelty of the design is the distance between the buttons
According to one approach, focus is only placed on parts in the novelty statement for questions regarding the eligibility of the design to be registered or in the design registration infringement check. According to a different approach, the entire design is examined, but emphasis is placed on the novelty statement. In other words, from the perspective of design infringement or novelty / originality, emphasis is placed on the element indicated in the novelty statement, if there was such a statement.
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Disclaimer
Disclaimers are intended to emphasize that the design registration applicant waives a particular design element in the design registration. For example, if a design includes text, and the registration owner does not want to limit the design registration to this text, he can add a limitation notice worded, “The registration does not grant exclusive rights to letters and numbers that appear in the object of the application.”
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Threshold conditions for registration of the design
In order to receive design protection, a design registration application must be submitted to the registrar of designs. The registrar checks whether the design meets the legal requirements for registration. Several conditions for registration follow:
(According to paragraph 30(1) of the Utility Patent and Design Registration Ordinance) The Supreme Court has interpreted these concepts as follows:
“The provisions of paragraph 30(1) deals with design registration. The provisions determine that novelty or originality are a condition for registration – novelty introduces a requirement that the design must show completely unknown form, shape, or decoration, and originality relates to the method of implementing known elements in a different manner from previously in the same area. (Civil Appeal 3406/96 Sella Concrete Company Ltd. vs. Ackerstein Industries Ltd. verdict)
- "Which has not been previously published in Israel"
(According to paragraph 30(1) of the Utility Patent and Design Registration Ordinance) The term “previously published in Israel” as it is practically interpreted, means that the design was publically published in Israel, in other words, that the general public in Israel has / had access to the design (see, for example, the decision of the registrar to invalidate design 41669). Similarly, in a recent decision by the registrar, designs that have been published on the Internet are included in this definition, even if the web sites are outside the country.
Example: Since a design must be novel or original in Israel, we ask the question, “Can a person get a design registration in Israel for an object that was seen outside of the country, and it is novel or original in Israel?” The answer is negative since that same person is not the design owner and he did not create the design. In order to receive a design registration for the object, he would have had to acquire the rights from the owner of the design outside of the country.
- The applicant must be the owner of the design
In other words, the creator of the design need not be the applicant. The applicant can be an entity that purchased the rights from the creator of the design or from someone who previously held the rights. If an employee created the design in the framework of his employment, then the employer owns the design. If someone commissions the design from the creator of the design, then person commissioning the design is the owner.
- The design must be “noticeable to the eye”
“Noticeable to the eye” in the language of the law. The intent is that it is seen by the eye. For example, the appearance of a drink can is not examined on its inside to determine whether to grant a registration, just its external appearance.
- The design must appeal to the eye
In practical use of designs, “appeal to the eye” is analogous to an impression that is likely to influence the consumer. In this case, the consumer is the purchaser who decides whether to buy the product bearing the design and is likely to be influenced by the design.
If the design does not appeal to the eye, it is not qualified to be registered. Note that there have been instances when design registrations have been cancelled in legal proceedings after they were granted because there was nothing in them that appealed to the eye. Furthermore, note that the design registrar’s decision to grant design registration protection is not absolute, and it is possible to overturn the decision in legal proceedings. Naturally, the term appeal to the eye is not absolute, and it can be interpreted differently by different people. In any case, the more that the design element is prominent and original, the greater is the strength of design registration. Accordingly, this condition should be the basis for the applicants request for design registration protection.
- The design is not dictated by functional considerations only
For example, the fact that it is possible to arrive at several different designs to achieve the same function, such that each design has a different appeal to the eye, attests to the fact that the function alone does not dictate the design.
- A design that is created or there is intent to create by an industrial process
An explanation of the term “industrial process” is presented below.
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What is an industrial process?
According to ordinance 72 of the design ordinances, the examination as to whether a particular process is an industrial process is a numeric examination. If the design is produced or if there is an intention to produce more than 50 copies, it means that this is an industrial process. Fewer than this number means that this is not an industrial process. Note that manual production can also be an industrial process.
According to this ordinance, an industrial process is defined in the following cases:
- Replication of more than 50 copies
- Replication of the design for printed paper curtains
- Replication of the design for carpets, printed oilcloths produced or sold by length
- Replication of the design for separate textile goods or for textile goods produced / sold by length
- Replication of a design that is an embroidery which is not hand-made
Example: A man produced a piece of jewelry for his wife. Since he made only one piece of jewelry, it means that this is industrial production. Therefore the design is protected by copyright law, not design law. Since works protected by copyright law do not require registration by a governmental organization, for example the design registrar, in fact, no action need be taken in order to assure ownership of the creation. Afterwards, since he liked the design, he sold the rights for the design to a company. Since the company intends to manufacture hundreds of copies of the piece of jewelry, in other words, “industrial production” according to the law, design laws are relevant. The company should apply for a design registration before the design is displayed in public (in other words, before the design is published).
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Designs and Copyrights
Paragraph 7 of the copyright law of 2007 determines:
“Regardless of the directives of paragraph 4, a copyright of a design as defined in the utility patents and design registration ordinance will not exist unless the design is not used and there is no intent to use it for industrial production. The minister has authority to set conditions which will determine when a design is used for industrial production.”
The intent is that designs produced industrially or for which there is an intention to produce them industrially is not protected by copyright law. In other words, if a particular design meets the criteria for design registration, it is not eligible for protection by copyright. Therefore, the design owner should act to obtain design protection, otherwise he will be without protection, and the design’s copy will be permitted. The test in this case is the determination of an industrial process as defined in ordinance 72 of the design ordinance.
Similarly, paragraph 22 of the 1911 copyright law determines that copyrights do not apply to designs that are appropriate for registration according to the utility patent and design registration law, except for designs that while appropriate for registration, are not used and are not intended to be used as models or examples for replication by an industrial process.
In other words, if a particular design that is intended for industrial production is not registered as a design, it is exposed to copy and copyright does not apply to it.
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Visual Test
The visual test is a test to check similarity between two designs, and the vision is that of the consumer who purchases the object bearing the design. Such a test can be used to determine whether a design constitutes prior art regarding a second design, that is, whether a particular design infringes on a registered design, etc.
In his decision regarding the request to register design 40567-40573, the registrar noted several points to implement in the visual test, among them:
- Comparison of the entire designs;
- But sometimes it is sufficient for a single innovation or a new combination of elements;
- The eye determines in this matter;
- The designs should be compared next to each other, although at a distance from each other;
- Changes or variations accepted in the trade are insufficient;
- When there is similarity between the objects but they are not identical, a suspicion that the relevant consumer could be confused between the protected design and the other design should be examined;
When looking for the significant differences, consideration should be given to the quality of the object, prior art in the field, and, naturally, the quantity of previously registered designs.
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Differences between design registration and copyright
Copyright has “weak” protection because it protects only against replication. Despite that, the period of protection is the entire life of the creator plus an additional 70 years.
For designs the protection is more hermetic; however, the period of protection is just 15 years from the date of registration.
Design registration has an additional advantage. The design registration owner can prevent others from using similar designs. In comparison, for a creation protected by copyright, two different people can reach the same creation, and both of them will be protected.
As previously stated, paragraph 22 of the 1911 copyright law and paragraph 7 of the 2007 copyright law determine that copyright does not apply to protected designs.
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Period of protection
As stated, the protection of a registered design is for 15 years from the date of the application for registration. When the design is accepted, it receives a period of 5 years from the date of the application. Afterward, it is possible to extend the period for 5 additional years, and after this period (in other words, after 10 years) it is possible to extend the period for another 5 years. The total is 15 years from the date of application for the design registration.
It is possible to renew design registrations retroactively after their expiration, on the condition that no more than 6 months has passed since expiration.
The registration process must be completed within one year of the examination. If the process is not completed within a year, there is a chance that the design does not qualify (according to the registrar’s notice).
There is no opposition process for the design registration. From the moment that it is accepted, it is possible to file a request to cancel it. There is no time limitation to request cancellation of a design.
After the design registration has been in force15 years, it is possible to register it as a trademark. If the design has acquired a reputation, in other words, the public identifies it with the manufacturer; the manufacturer is entitled to mark it with a trademark. Registration as a trademark grants the design owner ownership of the design indefinitely.
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The cost of cancelling a registered design
It is possible to cancel a registered design for any reason that could have negated its initial registration, for example, lack of novelty / originality, if it was previously published in Israel, that it is not registered in the name of the true owners of the design, that the design is dictated by functional considerations only, that it is not a form or decoration, that it is not noticeable to the eye, etc.
It is possible to file an appeal to the patent registrar regarding a registered design on the grounds that of prior registration. An appeal of a registered design for any acceptable reason, including prior registration in Israel, should be filed in district court.
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Priority Law
The only treaty on the subject of designs to which Israel is a signatory is the Paris Convention. Israel is not a signatory on any treaty for the common protection of designs.
According to the Paris Convention, to which Israel is a signatory, the applicant has half a year to apply to other treaty signatory states, such that the date for purposes of calculating novelty / originality of the design will be considered the date of the first application (priority date).
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