August 16, 2015

New Designs Bill in Israel

Dr. Ilan Cohn (Former Partner), Senior Partner
Dr. Ilan Cohn (Former Partner)

Senior Partner

Reinhold Cohn & Partners
David Gilat, Partner, Head of Legal Practice
David Gilat

Partner, Head of Legal Practice

Gilat, Bareket & Co.

On July 13, 2015, a new Designs Bill passed its first reading in the Israeli Parliament – the Knesset. The new Designs Law, when finally enacted1, will replace the old Patent and Design Ordinance that was the legal basis for design registration and protection in Israel to date and modernize the designs regime in Israel.

Some of the major provisions of the Bill are a new definition for a “product” encompassing graphic symbols and typographic typefaces, international novelty (in place of local novelty in the current Designs Ordinance), unregistered designs protection, grace period and provisions for Israel’s accession to The Hague Agreement2.

The Israel design protection regime is currently governed by the Patents and Designs Ordinance3 dating back to 19244. This Ordinance, although subjected to some revisions, is in its tenth decade since coming into force and certainly inadequate as a modern legal basis for design protection. The Bill is inspired by the European Directive 98/71/EC5 and incorporates some of the concepts and definitions thereof.

Under the new Bill, for a design to be eligible for registration, it must be novel and have a unique character6; the novelty requirement being universal. One of the new features in the Bill is the provision of a one year grace period from publication of an unregistered design, in which to apply for design protection. This will replace the local novelty requirement under the existing Ordinance7.

According to the Bill, a design application will be published shortly after filing of an application, although the applicant can request withholding publication for a period not exceeding 6-months from the date of filing. This will replace the old arrangement, under the Ordinance, whereby pending applications are not open to public inspection; nowadays registered designs are not published for a period of two years from the date of filing.

The Bill introduces a registration period of 25 years (subject to periodical renewals), to replace the regime under the Ordinance, whereby a design is registered for a period of 5 years, extendible by two additional 5-year periods, i.e. up to a total of 15 years from filing.

A major breakthrough of the Bill is the proposition of protection for an unregistered design. Such protection would endure for a period of 3-years as of the date of first publication in Israel. 

The Bill proposes to regulate fonts (“typographic typefaces” in the EC Directive) under the designs regimes, rather than the copyright regime. This issue will be covered by a separate newsletter.

Due to the pre-requisite that protection of unregistered designs must have linkage to Israel (first publication or sale must be in Israel in order to enjoy protection) the Bill may put foreign designers at a disadvantage in comparison to their Israeli counter parts8. Nonetheless, the Bill includes provisions which afford for bi-lateral or multi-lateral treaties that may mitigate this situation.

While protection of registered designs suggested by the Bill is absolute, the infringement of a non-registered design is relative, and dependent on whether the alleged infringer actually copied the original designs. A person who innocently copied an unregistered design may not be liable to damages. The Bill does not afford for statutory damages, such as in the tort of passing-off.

The Bill also contains an entire chapter dealing with international applications, which should pave the way for Israel’s accession to The Hague Agreement Concerning the International Deposit of Industrial Designs.

Subsequent to passing the first reading, the Design Bill goes to the Knesset Constitution Law and Justice Committee and once reviewed and deliberated there and possibly revised will come to the Knesset for a second and third reading to become law.

It is hoped that this will happen at Knesset’s next session, after the summer. We will, of course, report this matter in more detail, once the Bill becomes the new Design Law.

1 A law has to pass three readings by the Knesset. After the first reading, a bill passes for review, deliberation and possibly some revision to the Knesset Constitution Law and Justice Committee and then will be sent back for the second and third readings after which it will be enacted as law.

2 The Hague Agreement Concerning the International Deposit of Industrial Designs.

3 Following enactment of the 1967 Patents Law, which came into effect in 1968, the Patents and Designs Ordinance is applicable only to designs.

4 Enacted during the time of the British Mandate over the then Palestine.

5 Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the Legal Protection of Designs.

6 It remains to be seen whether “unique character” will be interpreted as “individual character” under Article 5 of Directive 98/71/EC.

7 The local novelty stipulated by the Ordinance has been extended, through the Registrar’s directives, to incorporate also all information published over the Internet accessible in Israel; this amounted, for all practical purpose, to a de facto international novelty requirement.

8  C.f. Council Regulation (EC) No 6/2002  of which Article 11 stipulates that “… a design shall be deemed to have been made available to the public within the Community if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community…”

This article is provided for general information only. It is not intended as legal advice or opinion and cannot be relied upon as such. Advice on specific matters may be provided by our group’s attorneys.

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