The Designs Law 5775-2015 has replaced the old Patents and Designs Ordinance. The law’s explanation suggestion states that the purpose of the law is to form a balanced, current arrangement to replace the Patents Ordinance. The change in terms in the new law does not change the nature of how designs are treated.
The purpose of design laws is to encourage people to develop new designs for public benefit. The need for a change in legislation was inevitable given the technological changes that have occurred in recent years, rendering the design laws under the old ordinance not being appropriate for recent progress and innovations. Example include new issues that have reached us in the field of graphic marks, logos, screen configurations, smartphones and intangible designs, and international agreements that the State of Israel is a signatory to, which have necessitated adjustment of and correction to the legislation.
The amendment was very important for Israeli designers, such as those operating in the fields of hardware, graphic designers, jewelers, fashion designers and others, operating overseas and having to adapt themselves to other countries.
One of the important changes in the law is the protection of an unregistered design. This protection is intended primarily for seasonal designs that are changed after a brief period, such as fashion, in which registration is frequently uneconomical and lengthy. Basically, the protection is provided for a period of 3 years from the date on which the design owner has first published his design in Israel or overseas. In the protection period, the unregistered design owner is entitled to prevent any commercial use of a product that is an identical copy of the design or that gives the user a general impression that is not different to the one that the product that is the object of the design gives.
Another important innovation is Israel’s enrollment in the Hague Convention, allowing an Israeli designer to file a single application at the international office, from which he may route the registration to a country in which he is interested in having his design protected. This saves Israeli designers a great deal of money and time and will allow them to protect their designs globally.
Another significant innovation that is intended to protect designers is a 12 month grace period from the day of the design being published, which we will explain. In order for a design to be considered registrable, it must fulfill two conditions. It must be new and of a unique character. New means that it was not published prior to the day of filing the application. Under the new law, the ability to register a design will not be infringed if it has been made known to the public during the 12 months preceding the registration application. The protection allows the design owner to check the market’s response, economic viability and other commercial matters during this period.
Basically, the designer is the first owner of the design. If the designer has acted according to a customer’s request, the latter is the owner, unless otherwise agreed between them. A written agreement is required by law. As is the case for parents, a design is transferable, sellable, licensable and uniquely licensable.
A registered design is valid for 25 years from the day the application is first filed, and if the applicant asks to have defects as decided by the register corrected, the first application submission date will be considered as the date of correcting the defects.
After filing of the application for registering the design and inspection of the application by the competent party at the Patents Authority, if the design is found registrable, it will be entered in the register.
Any person who is not the registered design owner is allowed to ask the registrar to cancel a registered design’s entry in the register, if one of the following circumstances applies, the most common of which are that the design was not protectable as a registered design or the application for filing the design was not filed by the design owner.
Design infringement entitles the design owner to an injunction, and compensation without proof of damage of 100,000 NIS per infringement. When awarding compensation, the court takes into
account inter alia the scale of the infringement, severity of the infringement, the actual damage sustained by the plaintiff, as estimated by the court, the profit that the defendant has gained owing to the infringement, as estimated by the court, the characteristics of the defendant’s activity, the nature of the relations between the defendant and the plaintiff, the defendant’s good faith, considering inter alia the existing range of options for making designs for products from the field to which the product that is the object of the design belongs.
On the matter of the compensation clause, infringements that are carried out in a single string of acts will be considered as a single infringement.
We believe that the new Designs Law has led to a dramatic turn in the protection of designers, mainly those who design seasonal products who cannot afford to protect their rights or when investing money is uneconomical, inasmuch as the design is of a transient nature. Therefore, designers have received new, good tools for safeguarding their rights, and must take advantage of this in order to deter forgers and imitators who live off them.