Israel’s new Designs Law (the “Law”) deals with the procedural aspects of design registration. In addition, it provides protection for registered designs. However, one of the groundbreaking innovations of this new legislation is the protection afforded to unregistered designs. This article will discuss some of the key differences between registered and unregistered designs.
What is a Registered Design?
According to Article 102(a) of the Law, the Patents Authority manages a ‘register of designs’ (the “Register“). This Register contains mandatory and material information pertaining to registered designs. Therefore, designs that are listed in the Register are considered ‘Registered Designs’. The Register is available for public review, which provides legal certainty.
What is an Unregistered Design?
According to Article 1 of the Law, an Unregistered Design is simply defined as a design that is not registered. Therefore, a design that does not qualify as a Registered Design is an Unregistered Design. However, for an Unregistered Design owner to be entitled to infringement protection, other conditions need to be met (see below).
What is the Term of a Registered Design and an Unregistered Design?
Article 39 limits the term of a Registered Design to 25 years from the submission date of the registration application. It is important to remember that the actual registration date has no bearing on the term of the design’s validity. Rather, the relevant date is that on which the request was submitted for review.
The term of an Unregistered Design, pursuant to Article 65 of the Law, is three years from the effective date. The effective date is the date on which the design owner proposed for sale, or commercially distributed, the product bearing the design to the public in Israel.
Protection of Registered and Unregistered Designs
Regardless of the various differences between Registered Designs and Unregistered Designs, both are subject to Article 5 of the Law. This provision states, in an absolute sense, that a design is not eligible for protection if it harms public policy.
In addition, Article 10 of the Law states criteria which, if met, will preclude both Registered Designs and Unregistered Designs from protection.
When will Unregistered Designs be Protected?
In order for an Unregistered Design to be entitled to protection pursuant to the Law, three criteria must be met:
- The design must be novel and possess a unique quality. This is the same standard that a design must meet for registration purposes;
- The owner of the design (or a person on the owner’s behalf) proposed for sale, or commercially distributed, the product bearing the design to the public in Israel; and
- The sale proposition or commercial distribution occurred within six months, from the time that the design owner (or a person on the owner’s behalf) first advertised the design or the product bearing the design. It makes no difference as to whether the advertisement was made in Israel or abroad.
Alternatively, an Unregistered Design is protected (without the above criteria being met) if Israel is a party to a convention with another country, and if the convention deals with the protection of unregistered designs. However, in such situations, the Law gives the Justice Minister discretion with respect to issuing an order to that effect (Article 4(b)).
What Protections Are Afforded to both Registered and Unregistered Designs?
A design owner, whose rights have been infringed, is entitled to an injunction as part of a claim for design infringement.
Under Article 73 of the Law, an infringement is tantamount to a civil tort, and the Torts Ordinance [New Version] applies, mutatis mutandis. For example, while the Torts Ordinance generally does not award compensation for unproven damages, the Law does grant such compensation. Pursuant to Article 75(a) of the Law, the court is authorized to award a plaintiff up to ILS 100,000, even if no damage has been proven as a result of the infringement. For infringement claims involving products bearing a design, the court also has the discretion to order transfer of the products to the plaintiff or their destruction.
Should you register a design?
The simple answer is it depends on the nature of your business and/or products.
If you plan on running a long-term business, or developing a brand with lasting effect, registration is a must.
However, even if you have more short-term business goals, it is still advisable to pursue registration of your design for maximum protection. Even if your design is already protected by law, having it registered and available to public review will increase certainty and mitigate problems that may arise.
For example, Article 78(a) of the Law affords a defense to a defendant in an infringement claim. If a defendant is able to prove both subjective and objective lack of awareness as to the existence of design rights at the time of infringement, then the defendant will not be obligated to pay compensation. However, Article 78(b)(1) explicitly states that if a design is registered, the presumption will be that the defendant should have been aware as to the existence of the design rights. While Article 78(b)(2) also provides plaintiffs with protection against this defense (by making the presumption of awareness dependent upon certain marks or publications), the presumption of awareness is much easier to prove through registration.