Newly Enacted Design Law Heralds a Modern Era for Design Protection in Israel

The Knesset (Israel’s parliament) has approved today, July 26, 2017, the new Designs Bill, after which has become law. The law, which will come into force 12 months after its enactment[1], will provide the legal basis for protection of designs, and will eventually replace the old Patents and Designs Ordinance of 1924. The Ordinance shall still govern the protection of designs filed before the coming into force of the new law.[2]

The law adopts a modern approach to design protection, and one of its prominent objectives was to provide small and medium-sized local enterprises and individual designers effective tools to protect their designs and enforce their rights. The law is inspired by EU[3] and British[4] legislation and incorporated, mutatis mutandis, some of the definitions of said laws.

Among the highlights of the new law are the following provisions:

• “Product” instead of “article” – The new law replaces the term “article” in the Designs Ordinance[5] with “product”[6], which covers also graphical symbols and screen displays.

• Requirement for an ”individual character” – The new law replaces the requirement for novelty or originality[7] with a cumulative requirement for novelty and individual character[8]. A design will be considered as having “individual character” when the general impression it creates on the informed user is different than the general impression created by a prior design[9].

• Duration of protection – The term of registered designs filed on or after the new law comes into force will be 25 years (instead of 15 years), counted from the Israeli filing date and subject to periodical renewals[10]; registered designs filed before the coming into force of the law will be eligible for an additional third renewal term of three years (totaling 18 years), subject to payment of the prescribed official fees.[11]

• Absolute novelty – The new law replaces the requirement for local novelty (with a certain exception for publications over the internet)[12], with a requirement for absolute novelty[13]. According to the new law, a design shall be considered new if identical design or a design that differs from it only in unsubstantial details was not published in Israel or outside Israel before the determining date.

• Grace period – According to the new law, disclosure of a design by its proprietor or a third party who obtained information on the design prior to the proprietor, lawfully or unlawfully, within a period of 12 months from the filing date of the application in Israel, or before its priority date, will not be considered prior publication[14].

• Unregistered design – According to the new law[15], a design that is novel and has an individual character may be protected as an unregistered design, subject to some requirements[16]. The unregistered design right affords its proprietor the right to prevent the manufacturing for commercial use of a product that copies the design or that creates and overall impression on the informed user that is not different from the overall impression created by the product subject of the design[17]. The term of protection for unregistered designs is three years[18].

• Statutory damages – Since it is often difficult to determine damages, the new law provides for statutory damages of no more than ILS 100,000 for each act of infringement[19]. When determining the amount of damages, the court may consider, inter alia, the following: the scope of infringement, the severity of the infringement, the actual damage caused to the plaintiff, as assessed by the court, etc.[20]

• Criminal offense – The new law sets a criminal offense for intentional copying of a registered design[21]. Under the new law, a person commits a criminal offense if in the course of business he or she commercially produces or imports a product carrying a design identical to a registered design without the authorization of the registered design owner[22]. The criminal offense also extends to a corporate functionaries and requires them to supervise and implement measures to avoid the offense[23].

• Customs measures – The owner of a registered design may request Customs to detain suspected goods, subject to formal procedural requirements. This provision does not apply to goods imported for personal use[24].

• Owner of the design – The right to a design shall be vested in the designer[25]. However, where a design is developed by an employee executing his or her duties or while substantially using the employer’s resources, the right to the design shall be vested in the employer, unless otherwise agreed between the employer and the employee[26]. In case of commissioned works, the right to the design shall be vested in the person who commissioned the design, unless otherwise agreed between the parties[27].

• Israel’s accession to The Hague Agreement – The new law 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.

• Changes in the examination procedure – These changes will be reported on separately as soon as the respective regulations have been introduced.

The new law has undergone second and third readings at the Knesset today (26.7.2017). The next step would be the enacting of new regulations to the Law. We shall keep you advised. 

[1] Excluding some provisions that will come into force as soon as the law is enacted.

[2] Basically, this means that the ordinance will remain in force for 18 years after the new law comes into force.

[3] Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs.

[4] Registered Designs Act, 1949.

[5] Patent and Design Ordinance, Section 2 defines “article” as “any article on manufacture and any substance, artificial or natural, or partly artificial and partly natural”.

[6] The Designs Law, Article 1 defines “product” as “including set of articles, packaging, graphic symbol, screen displays and excluding typefaces and computer programs”.

[7] Patent and Design Ordinance, Section 30(1).

[8] The Designs Law, Article 3.

[9] The Designs Law, Article 7.

[10] The Designs Law, Article 39.

[11] Patents and Designs Ordinance, Section 33(3A).

[12] Patent and Design Ordinance, Section 30(1); Registrar Letter M.N. 69 as of December 24, 2008; Registrar Decision as of June 9, 2013, Re Designs Nos.51593 and 51594, TEQUILA CUERVO, S.A. DE C.V., et al.

[13] The Designs Law, Article 6.

[14] The Designs Law, Article 9.

[15] The Designs Law, Article 4.

[16] The Designs Law, Article 4(A)(2) – the product subject of the design was offered for sale or distributed to the public in Israel commercially, by the proprietor of the design or on its behalf, within six months from the date it was published (in Israel or outside Israel), or from the date it was offered for sale or distributed in public, whichever comes first, including on the internet, by the proprietor of the design or on its behalf, for the first time.

[17] The Designs Law, Article 61.

[18] The Designs Law, Article 65.

[19] The Designs Law, Article 75A.

[20] The Designs Law, Article 75B.

[21] The Designs Law, Article 92.

[22] The fine for  intentional copying of a registered design is up to ILS 226,000 (or ILS 452,000, if the offense was made by a corporation).

[23] The Designs Law, Article 93.

[24] The Designs Law, Article 110.

[25] The Designs Law, Article 11.

[26] The Designs Law, Article 12.

[27] The Designs Law, Article 13.