Finally, after a lengthy legislation process, on July 26. 2017 the Knesset approved the Designs Law, 2017. The Designs Law replaces the main legal arrangement, which governed for over 90 years the protection of industrial designs in Israel - The Patents and Designs Ordinance of 1924, by a more modern and updated arrangement. Presumably, the Law will be published within the next few days, and will come into effect one year after its publication.
One of the purposes of law of designs is the encouragement of development and promotion of innovation in the designs of products by conferring protection for novel and unique designs for a certain period of time; this, both in the interests of designers, who secure protection for the fruits for their labor, and in the interests of the public, who enjoy the development and free use of the designs after the termination of the term of protection. This purpose is also at the core of the new Designs Law and guided its drafters. Accordingly, the Law includes various provisions to benefit designers as well as small businesses. Also, the Law adjusts legislation to the technological advance of the most recent years. As a rule, the Law has updated the legal framework governing designs and harmonized it with the updated legislation in the other fields of intellectual property. The new Law aims at reducing designers' apprehensions over infringement of their rights and increasing certainty with respect to the rights conferred to them (for example, in connection with non-registered designs, as will be discussed below).
Following is a brief and non-exhaustive outline of some of the main changes introduced by the new Designs Law, which are of a practical significance both for design owners and third parties:
- One of the significant innovations in the Law – if not the most significant one – is that non-registered designs will also be entitled, under certain circumstances, to protection. This will allow for the protection of designs for products which, by nature, have a short life cycle (such as fashion products), the designers of which do not usually see economic merit in applying for their registration. Also, the protection of non-registered designs can benefit small businesses which lack the economic ability and/or information required for having their designs registered. The aforesaid notwithstanding, the protection conferred by the Law upon a non-registered design is more limited, both in nature and duration, than that conferred upon a registered design: unlike the absolute protection afforded by a registered design, a non-registered design affords protection solely against copying, and for a period of three years from the date on which it is first offered for sale or distributed. In order for a non-registered design to secure protection, it must be entitled for registration and, in addition, must be originally (or within 6 months from the determinative date) offered for sale or commercially distributed in Israel.
- A further substantive change introduced by the new Law is the extension of the term of protection for registered designs, from a maximum of 15 years under the Ordinance to a maximum of 25 years according to the Law. In addition, the term of protection for designs that were registered pursuant to the Ordinance has been extended by three years, to a total of 18 years.
- The new Law grants designers, under certain circumstances, a "grace period" of 12 months for filing an application for the registration of a design even after its publication.
- Also, provisions enabling the State of Israel to accede to The Hague Design Treaty are included in the new Law. This point is of cardinal importance as it will enable Israeli applicants to submit international applications for the registration of industrial designs via the World Intellectual Property Organization (WIPO).
- In addition, the Law includes new remedies and measures of enforcement in the event of the infringement of designs. Thus, for instance, the Law allows for the award of a compensation of up to NIS 100,000 for each act of infringement, without need to prove damage; the possibility to request seizure of products carrying infringing designs in Customs; and, under certain circumstances, the ascription of criminal liability for the infringement of designs.
- In certain aspects, the Law is more rigorous as regards the conditions for design registrability. For a design to be registrable, it must comply with two cumulative conditions (rather than alternative conditions, as previously required under the Ordinance): (1) novelty – that is, an identical design, or else one that differs from it in immaterial details, has not been published prior to the publication or distribution of the design in Israel or abroad. The novelty requirement will be considered not only in relation to prior publications in Israel, as was the case in accordance with the Ordinance, but also in relation to prior overseas publications; and (2) uniqueness - the overall impression that the design produces on an informed user must differ from that produced by another design (of whatever class) which was published before the publication of the requested design.
- The powers of the Registrar of Designs as regards the cancellation, deletion and amendment of designs have been extended and are very similar to those associated with the cancellation of a registered trademark, mutatis mutandis.
Here at Last, but is Everyone Celebrating?
It is noteworthy that, at the outset, the new Deigns Law was to be applicable also to typefaces (fonts). However, typeface designers have mounted strong opposition which was voiced, inter alia, in the framework of a round table discussion held on January 7, 2016 at the S. Horowitz Institute for Intellectual Property at the Tel Aviv University Faculty of Law. Due to this opposition, it has been decided that protection for typeface would remain under the jurisdiction of copyright law, rather than that of the new Designs Law. Nevertheless, the new Law expressly acknowledges that screen displays and graphic signs (icons) can be protected as designs.
The introduction of the new Designs Law is certainly an important and welcome step. However, one may assume that not everyone is satisfied with certain aspects of the Law. Such aspects may include, inter alia: (1) the said toughening up of the criteria for registration of a design; (2) the avoidance of dealing with the issue of the relationship between copyright and design law, particularly with the legal issue whereby industrial production deprives the designer of the long term of protection conferred upon it by copyright law and affords shorter protection under design law (which is highly pertinent to the merchandising process). It would seem that the legislature has elected to await the Supreme Court's ruling on this issue, in a current pending case (C.A 1248/15).
Also, in addition to the new arrangements the Law introduces, it is likely to give rise to various questions regarding its interpretation, which will sooner or later come before the Registrar of Designs and the courts. The undersigned are available for any assistance you may need in this connection.
Link to the proposed Designs Law (in Hebrew) – http://fs.knesset.gov.il//20/law/20_ls2_389690.pdf
