What is an industrial 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.
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, paragraph22 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 incombination, clearly visible in finished goods, and it is possible to detectthem with unaided eye, but the term does not include any method or basis ofconstruction or anything that is, in principle, just a mechanical device (Utilitypatent and Design registration Ordinance, paragraph 2).
“Image lines (in other words descriptive lines), form, example, ordecoration” (in other words ornament)
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 possibleto record “Every new or original design that has not been previously publishedin Israel”. From this, the conditions needed to allow a design registration areas follows: a) it is new or original; b) it has not been previously publishedin Israel; c) it includes external styling that is determined in an industrialprocess; d) the external styling is obvious in the final product; e) it is nota product that is principally a mechanical device.” (partial court ruling from 26July 2009 in Tel Aviv, 1562/04)
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 adesign registration.
An illustration does not qualify for design registration because it isnot an object. Similarly, a computer presentation, a film, etc., does not qualify.
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 aregenerally sold together or are intended for use together. Cutlery and chess pieces are examples of sets of objects. The design registration fees aresomewhat higher for a set of objects than the fees for a single object.
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.
As mentioned, the law excludes design registration protection for designs that are dictated only by functional considerations. When there isdoubt 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 ownobject 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)
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.
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:
According to one approach, focus is only placed on parts in the noveltystatement for questions regarding the eligibility of the design to beregistered or in the design registration infringement check. According to adifferent approach, the entire design is examined, but emphasis is placed onthe novelty statement. In other words, from the perspective of designinfringement or novelty / originality, emphasis is placed on the elementindicated in the novelty statement, if there was such a statement.
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.”
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:
“Novelty or Originality”
(According to paragraph 30(1) of the Utility Patent and DesignRegistration 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 RegistrationOrdinance) 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. Theapplicant can be an entity that purchased the rights from the creator of thedesign or from someone who previously held the rights. If an employee createdthe design in the framework of his employment, then the employer owns thedesign. If someone commissions the design from the creator of the design, thenperson 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 intentis that it is seen by the eye. For example, the appearance of a drink can isnot examined on its inside to determine whether to grant a registration, justits 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 havebeen cancelled in legal proceedings after they were granted because there wasnothing 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.
What is an industrial process?
According to ordinance 72 of the design ordinances, the examination asto whether a particular process is an industrial process is a numericexamination. If the design is produced or if there is an intention to producemore than 50 copies, it means that this is an industrial process. Fewer thanthis number means that this is not an industrial process. Note that manualproduction can also be an industrial process.
According to this ordinance, an industrial process is defined in thefollowing cases:
Example: A man produced a piece of jewelry for his wife. Since he madeonly one piece of jewelry, it means that this is industrial production. Thereforethe design is protected by copyright law, not design law. Since works protectedby copyright law do not require registration by a governmental organization, forexample the design registrar, in fact, no action need be taken in order toassure ownership of the creation. Afterwards, since he liked the design, hesold the rights for the design to a company. Since the company intends tomanufacture hundreds of copies of the piece of jewelry, in other words, “industrialproduction” according to the law, design laws are relevant. The company shouldapply for a design registration before the design is displayed in public (inother words, before the design is published).
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 thatcopyrights do not apply to designs that are appropriate for registrationaccording to the utility patent and design registration law, except for designsthat while appropriate for registration, are not used and are not intended tobe 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.
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 artregarding a second design, that is, whether a particular design infringes on aregistered design, etc. In his decision regarding the request to registerdesign 40567-40573, the registrar noted several points to implement in thevisual test, among them:
Comparison of the entire designs;
When looking for the significant differences, consideration should be given to the quality of the object, prior art in the field, and, naturally, thequantity of previously registered designs.
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 acreation protected by copyright, two different people can reach the samecreation, and both of them will be protected.
As previously stated, paragraph 22 of the 1911 copyright law andparagraph 7 of the 2007 copyright law determine that copyright does not applyto protected designs.
Period of protection
As stated, the protection of a registered design is for 15 years fromthe date of the application for registration. When the design is accepted, itreceives a period of 5 years from the date of the application. Afterward, it ispossible to extend the period for 5 additional years, and after this period (inother 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 theirexpiration, on the condition that no more than 6 months has passed sinceexpiration.
The registration process must be completed within one year of theexamination. If the process is not completed within a year, there is a chancethat the design does not qualify (according to the registrar’s notice).
There is no opposition process for the design registration. From themoment that it is accepted, it is possible to file a request to cancel it. Thereis 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.
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 nameof the true owners of the design, that the design is dictated by functionalconsiderations only, that it is not a form or decoration, that it is notnoticeable to the eye, etc.
It is possible to file an appeal to the patent registrar regarding aregistered design on the grounds that of prior registration. An appeal of aregistered design for any acceptable reason, including prior registration inIsrael, should be filed in district court.
The only treaty on the subject of designs to which Israel is a signatoryis 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, theapplicant has half a year to apply to other treaty signatory states, such that thedate for purposes of calculating novelty / originality of the design will be considered the date of the first application (priority date).
Disclaimer: The information on this web site is general and cannot take the place of professional advice given with full knowledge of the specific circumstances of each case following consideration of the relevant facts and laws. Furthermore, for the sake of clarity, some details have been omitted or partially specified.