Back in March 2008, Zippi Honey Ltd. filed a series of design registration applications (45607 through 45611) for some items. Design applications do not formally publish in Israel, and these are not avaiable for inspection, but for argument’s sake, let’s assume decorative honey pots, spoons and similar goods for vending honey in, perhaps for Rosh Hashannah.
Israel’s archaic design law is covered by the Patent and Design Ordinance that was last amended in 1937, and the Design Regulations of 1925.
According to Section 31 of the Design Regulations, the applicant has 12 months from filing to complete the design registration. The applicant in this case, failed to do so, ignoring letters and reminders from the Israel Patent Office. As there were 5 designs, it appears that the Patent Office sent out a total of 10 letters that were ignored, (but to be fair to the applicants, these may have gone out in the same envelope).
Over a year later, after engaging a lawyer to operate on their behalf, the applicant took steps to revive the design application, and noted that one of the designs was being copied and that they had even received a temporary injunction against the alleged infringer. IP Judicial Review Officer Shoshani Caspi rejected this revival attempt as there was no indication that the Israel Patent Office was at fault in any regard in this case.
Comment
Clearly, Shoshani Caspi is correct, but who cares? The applicant has a date by which he applied for a registered design thereby establishing a connection with the design from a date of over two years ago. Without the registered design, the applicant got a temporary injunction in this case. In a recent posting, http://blog.ipfactor.co.il/2009/12/31/jerusalem-court-issues-temporary-injunction-against-copycat-challah-cover-manufacturers/ a company who didn’t bother to file a design application at all, nevertheless obtained sweeping temporary injunctions against a third-party under the Doctrine of Unjust Enrichment, that even prevented marketing abroad items manufactured in China that were similar to, but distinguishable from the ‘originals’! In such a state of affairs, it hardly matters that the design registration has been rejected on a technicality. The registration seems to be redundant!
You probably agree that the problem here is the unjust enrichment rulings, not the rejection on technical grounds. Unjust enrichment rulings like that you mention endanger the whole IP edifice, which notwithstanding its various problems has been carefully honed for hundreds of years and at this point has truly international scope.
I do indeed have a problem with Unjust Enrichment being used in IP cases, but mostly regarding patents not design, and note that the text of the amendment for automatic publication at 18 months (second reading) wants to do away with it.