In a cancellation proceeding regarding Design Number 39519 to Ackershtein Ltd, Wolfman Industries Ltd. have managed to cancel a design for a kerb-stone.
The Law (Section 36 of the Patent and Design Ordinance) allows third parties to initiate design cancellation proceedings where a design was published in Israel prior to registration.
The case is interesting as grounds for the cancellation concerned what constitutes publication, both in terms of where and to whom, and in terms of whether a previously published single view of a three-dimensional object, which is rather less than generally required to register a design, is sufficient to cancel a registration by rendering it lacking in novelty.
The applicant apparently discussed the design at a closed meeting where a representative of Wolfman was present on 14 April 2004, which was prior to filing the application on 25 July 2004. Additionally, on the following day to that meeting, Yoval Winter, an employee of Wolfman, found the design on a website belonging to Brett Group and Profilebiton, where apparently the design was viewable from 2001 onwards.
The Arbitrator of Intellectual Property and Assistant Commissioner, Noah Shalev Shmulovits ruled that both the meeting and the internet publication constituted publication under Israel Law.
Furthermore, the fact that the bottom and back surfaces of the design were not published is immaterial, since the side that matters, i.e. that facing the road and viewable to the public when the kerb stone is in place, was published.
The assistant-commissioner ruled that the design registration was voided and further awarded 30,000 NIS costs to Wolfman.
One criticism I have is that the two Internet publications appear to be from abroad. One from Brett, a UK company, and the other from Profilbeton, apparently a German company. In a quirk of the Law, dating back to the mandate and never updated, designs in Israel require local novelty only. In circular M.N. 69, from December 2008, the commissioner of patents, Dr. Noam, extended this to include that published on the Internet and available from Israel. See http://blog.ipfactor.co.il/2008/12/28/new-israel-design-regulations/. At the time of the infringement, I would argue that the Law, though hopelessly out of date, required local novelty. Thus, I am not sure that the Internet publication can fairly be considered a publication.
That said, I agree that the meeting was sufficient to be considered a publication under the Law. Note - Profilbiton may be an Israeli company. I couldn’t find them on the Internet, although the Assistant Commissioner claims to have with no problem.
