Ruling on Design Applications IL 40573 to IL 40567 all filed by a Yigal Belcher, the Commissioner of Patents at the Israel Patent Office, Dr. Meir Noam has clarified the purpose of registering design applications.Apparently Belcher was a major share-holder of Belcher Building Materials LTD., and had a series of designs registered for profiles and connectors for making frameworks for plastic greenhouses. As a private individual, he retooled the profiles, making minor changes and filed a second set of design registrations. Whilst it is clear that the designs are very similar, Noam ruled to allow the ‘new’ designs to be registered since although the basic design is functional, the differences are aesthetic (i.e. non-functional) and serve as indicators of the source of the profile.Whilst Noam’s reasoning is logical and clear, and the decision to publish this ruling is because it is an extreme case of copying a design assigned to someone else with changes to allow registration, it appears that the decision will established that a very low standard of product differentiation is needed to obtain registration. The fear is that the courts will build on the A.Sh.I.R. case where an unregistered design was recognized, and now allow plaintiffs to claim Unjust Enrichment and Passing Off despite defendants obtaining registered designs. I consider such developments as inherently bad, since it leaves too much power to the Israel courts to do justice as they see fit, removing the fidelity from the system and making a mockery of the whole purpose of registering designs. It will be noted that Intellectual Property in Israel goes automatically to the District Court with one Appeal to the High Courts and there is no specialist Intellectual Property Court and many judges lack a firm foundation in the subject of designs, trademarks, patent and copyright.To highlight the problem, I was consulted earlier this week with a client who was interested in importing a domestic product that would compete with a device that had established a market presence and perhaps created its market. Many of the design features of both the established and the potentially competing product are dictated by engineering considerations. I could indicate that the differences were substantial enough to get design registration, but it was clear to all of us that the importers and distributers of the established product would sue as their market is encroached. Here lies the problem. It is impossible to guess how a judge will view the case: is this legitimate competition or unjust enrichment? Thus although Noam’s ruling has clarified the requirements for registering designs, I am not sure that it doesn’t blur the lines of the wider picture.
For historians amongst you, the idea of registering designs for extrusions for frameworks was apparently a brainwave of Advocate Adi Levit, who counseled Klil, a leading Israel manufacturer of aluminium profiles for windows. They claimed to have a superior product fabricated from a superior alloy but had a problem in marking their product so that purchasers of apartments could be sure that they were getting the real thing. The solution was to add little protrusions to the dies so that lines would appear on the extrusions and to register the ‘designs’ for extrusions with one, two or three parallel lines.
