The definition of a design under the Law
Section 1 of the Law defines as follows:
"" Design" – the appearance of a product or part of a product, composed of one or more visual characteristics of the product or part of the product, as the case may be, including outline, color, shape, decoration, texture or material from which they are made"
The definition of a product under the Law
Section 1 of the Law defines as follows:
""Product" – including a set of articles, packaging, a graphic symbol, a screen display, excluding a font and computer software"
A graphic symbol refers to an icon, and not to logos that may be protected under other laws (such as trademarks and copyrights). A graphic symbol, or animated screen display, must be filed as a sequence of images that reflect the progress of the animation, indicating that the product is a graphic symbol or an animated screen display, in the verbal description in the application form. It should be clarified that the list is not exhaustive, and the items mentioned therein are mentioned in order to remove any doubt that they constitute products according to the Law.
A design can be protected, even if it appears on part of a product, as stated in the definition of a design.
It is not possible to protect the characteristics of the product or parts of it that are not visible to the consumer, in the normal use of the product.
The definition of a set of articles under the Law
Section 1 of the Law defines as follows:
""A set of articles" – at least two articles of the same class, having visual characteristics that differ from each other only in immaterial details and are normally offered for sale or use together"
Examples for a set of articles: a seating system with a common visual characteristic; A set of chess pieces with common visual characteristics; A crockery set.
Visual features may be:
1. Color – A color or combination of colors can be a single visual feature, or a visual feature that is added to additional visual features, when the color or combination of colors appears in the visual description. If the visual description is provided in color and the color is not a visual feature of the product, the applicant must indicate that fact in the verbal description in the application form.
2. Decoration as a single visual feature – The decoration applied on a product can be protected by registration of a design in the class to which the product belongs, while noting the name of the design (e.g.: "shirt decoration" class 02-02). Such an application shall be filed by using broken lines on the products parts which are not part of the requested design. If necessary, a verbal description of the design can be added.
3. Texture or material – Protection can be granted to a product whose texture or the material it is made of, are showing in its visual features whose registration is requested, as long as the texture or material affects the product appearance, and are clearly visible in the visual description. It should be emphasized that the functional aspects of the material are not protected by the registration of the design.
4. Outline and shape are additional features expressly specified in the Law.
The Novelty requirement (Section 6 of the Law)
Section 6 of the Law provides that –
"A design shall be deemed novel if, prior to the relevant date, an identical design or a design that differs from it only in details that are immaterial, has not been made public, in Israel or outside it".
A design shall be deemed novel, if prior to the filing of the application for its registration or prior to the date of the priority right, the earlier of the dates, an identical design or a design that differs from it only in details that are immaterial, has not been made public, in Israel or outside it.
The publication of the design by its proprietor during the 12 months preceding the filing of the application or the date of the priority right, shall not prejudice the novelty requirement, but it is not possible to approve the registration of a design published by its proprietor prior to the above dates.
"Date of the priority right" is the date on which the prior application for registration of the same design was filed in one of the Member States of the Paris Convention or the World Trade Union, provided that the application in Israel was filed within six months from the prior application filing date, and recognition of the date of the priority right was requested, all pursuant to the provisions of Section 21 of the Law. It is clarified that an international application filed in accordance with the provisions of the Hague Agreement can be recognized as the first application regarding priority rights.
The examination of the existence of a publication of a previous design that is identical or differs from the requested design only in details that are immaterial according to the work instructions for the examination of an application for registration:
1. A design will be examined as a whole compared to the publication of a previous design as a whole. A mosaic between previous publications may not be constructed. That is, the visual features of one design cannot be compared to the visual features of a number of previous designs together.
2. A design will be examined against the previous publication one next to the other, but also separately, at a certain distance from one another.
3. A combination of visual features published in different designs may be eligible for protection if the combination of elements creates a design that is novel and has an individual character in its entirety.
4. All visual features of the design shall be taken into consideration when examined, excluding the following exceptions:
a. Features dictated solely by the function of the product (pursuant to Section 10 (1) of the Law);
b. Features intended to allow disassembly and assembly by means of a connection or a combination with another product (pursuant to Section 10 (2) of the Law)
c. Features that are not visible in the visual description.
d. Visual features for which protection is not requested.
5. Immaterial details such as slight variations in shade, indistinguishable details such as a small change in a pen cap, etc. will be examined according to the nature of the product and the design.
individual character (Section 7 of the Law)
Section 7 of the Law provides that –
"(a) A design shall be deemed of an individual character, if the overall impression it creates for the informed user differs from the overall impression created for such a user by another design, that was made public prior to the relevant date; For this purpose, designs concerning all classes of products will be taken into account.
(b) In addition to the provisions of subsection (a), when determining whether a design creates for the informed user a different general impression as stated in the aforesaid subsection, should take into account, inter alia, the various options available for designing designs with respect to products from the field to which the product subject to the registered design belongs "
The individual character requirement is in addition to the novelty requirement.
The informed user:
The informed user is a person who uses the product for the purpose for which the product was made. He is an imaginary person, who is between a reasonable consumer and an expert in the industry familiar with the variety of designs existing in the sector to which the design belongs and possessing a certain level of knowledge about the visual features these designs usually have. Depending on the nature of the product, the informed user may be one or both of these: a professional who purchases the product for distribution to the end consumer, and the end user himself.
Examination of the existence of an individual character according to the work instructions for examining an application for registration:
1. In examining the existence of an individual character, the overall design will be compared to the previous publication in its entirety. When comparing, it is not possible to create a mosaic between various previous publications. The examination must be done from the point of view of the informed user, who purchases the product without having devoted much time for a detailed examination. It is assumed that the perspective of the informed user is not as painstaking as that of an expert, but not as superficial as that of an occasional passerby. Emphasis should be placed on the impression received from the overall visual and not from the design details. Differences between the design and the previous publication do not make the design eligible for registration, if the design does not create a different general impression with the informed user.
2. The comparison of designs will be done while ignoring elements that do not appear in the visual description.
3. An examination of the individual character of the design will be carried out while considering the variety of possibilities available for designing designs in respect of the products from the field to which the product the subject of the design belongs; In areas where design freedom is limited, small changes are sufficient to meet the individual character requirement. However, customary changes in the field do not usually lend a individual character.
4. The examination of the individual character will take into account designs of all classes of products, however the class of product and the industrial field may influence the designer's freedom of design and may therefore be given weight.
Visual features that are not eligible for protection (Section 10 of the Law)
Section 10 of the Law provides that –
"Notwithstanding the provisions of this Chapter, the following are ineligible for protection as a registered design or an unregistered design:
(1) the appearance of a product, or part of a product, dictated solely by the function of the product;
(2) the appearance of a product or part of a product, if the product or part of the aforesaid product were intended to connect to another product, become integrated within another product or the other product is integrated therein, and to achieve their aforesaid designation it is necessary to manufacture them in the exact form and dimensions in which they were manufactured.
As stated, it is not possible to obtain design protection for the design of a product dictated solely by its function, since the protection of the manner of functionality of the product is granted under patent laws, and in accordance with the conditions stipulated therein. It should be clarified that it is not sufficient that there are several possibilities for achieving the same function in order to convince that the appearance of the product is not entirely dictated by functional considerations.
In addition, design protection cannot be obtained if the product is intended to connect or integrate into another product or to have another product be integrated into it, if in order to achieve the purpose of one of the products (the product must be manufactures exactly in its form and dimensions. The same goes for part of the product.
If the designs examiners do not find an identical or very similar design for which the application was filed, the application will be approved and its proprietor will be given a certificate of registration. Additional details regarding the examination of the application can be found in the work instructions for examining an application for registration.
The first proprietor of the design (Section 11 of the Law)
The designer is the first proprietor of the design, unless otherwise provided in the provisions of the Law.
The first proprietor of a service design (Section 12 of the Law)
The first proprietor of a design that was designed by an employee in the performance of his duties or while using the employer's resources, is the employer, unless otherwise agreed between the employee and the employer.
The first proprietor of a custom design (Section 13 of the Law)
The first owner of a custom-made design is the commissioner of the design, unless otherwise agreed between the commissioner of the design and the designer.
Rights of a registered design proprietor (Section 37 of the Law)
A registered design proprietor has an exclusive right to manufacture, sell, rent, distribute commercially, or import into Israel, in respect of the registered design and any other design that creates an overall impression that it is not different from the overall impression created by the registered design.
The registered design proprietor is granted exclusive rights to the use of the design only in the country in which he is registered and the registration certificate given to the proprietor attests to his rights. In the event of infringement of his rights, the design proprietor may sue the violator so as to preclude him from engaging in any activity of a commercial nature (such as: production, use, sale or publication) in a product of a similar or identical design to the object for which the design was registered.
Every application is classified according to the List of Classes and Subclasses, found in the Third Schedule to the Regulations (Regulation 6) and is examined accordingly. The classification is determined according to the purpose of the object and appears on the registration certificate.
If a design applicant in Israel wishes to register the design in other countries that have signed the Paris Convention, he must file the applications in the various countries with a priority document regarding the application filing in Israel. The Department Secretariat may, after payment of the appropriate fee, be requested to issue a priority document containing the visual reproduction of the product for which the application was filed in Israel and information regarding the filing date of the application. The information in the priority document appears in Hebrew and English.
Cancelation of Registered Design:
Pursuant to Section 48 of the Designs Law, any person who is not the design proprietor may request the cancelation of a registered design, on the grounds that the design was not eligible for protection as a registered design or on the grounds that the design registration application was not filed by the design proprietor. A request to cancel the design will be filed to the Department's Secretariat together with the appropriate fee. After the filing of the parties' arguments and evidence, the case shall be transferred to the Tribunal Secretariat for the scheduling of a hearing date before the Registrar.