Israel Patent Office Refuses Reinstatement Appeal for Design

July 4, 2010

Sanplast LTD. is an Israeli manufacturer of plastic goods.  Back on 13 June 2004 they submitted a request to register a design No. 39381 with the Israel Patent Office.

In March 2005 there was a first Office Action to provide additional Figures showing further views and in April 2006, as no response had been submitted, and 12 months had passed since the design application was filed, the patent office sent applicant a notice regarding imminent closure of the file. In lieu of a response being filed, the file was closed in July 2006.

Two years later, in 2008, the CEO tried to revive the file and the head of the design registration department ruled that there were no grounds to do so.

A further attempt to open the file was submitted by ex Commissioner Moshe Goldberg, who claimed that the file was closed after successful examination back in 2006, and with the only thing missing being the publication fee.

On examination of the file, the Arbitrator of Intellectual Property Ms Yaara Shoshani Caspi ruled that the grounds submitted were in contradistinction to the contents of the file-wrapper and that the facts did not support the request for reinstatement. Since (i) she could find no evidence of the patent office making a mistake or acting improperly, (ii) the correspondence reached the applicant in good time, and (iii) third parties’ rights would be potentially compromised, she rightly refused to allow the case to be reopened and the design registered.

COMMENT

Design rulings are sufficiently rare that any of them are newsworthy. Since the design never issued, we cannot tell what plastic item is under discussion – which could be the most interesting thing about the case. One point of note is that Adv. Goldberg either didn’t check the facts out and/or was misled by client. In such cases, as apparently the patent office does review the files and checks out allegations,  it seems worth getting a POA and inspecting the file before submitting requests for revival / reinstatement.

1 Comment | Intellectual Property, Israel, Israel Patent Office Rulings, design, israel design ruling | Permalink
Posted by Michael Factor

Israel Patent Office Refuses to Allow Lapsed Design to be Reinstated

April 18, 2010

Concerning registered design number 39367, the Judicial Review Officer at the Israel Patent Office, Yaara Shoshani Caspi has refused to allow a lapsed design to be reinstated.

In Israel, designs are registered for 5 years at a time and may be renewed twice, to a maximum of 15 years. The design should be renewed before the 5 months are up, but registrant has a grace period of six months.

The registered design in question was up for renewal in June 2009 and so the grace period ended in December 2010. The request for reinstatement was made and the fee paid in April 2010.

The Judicial Review Officer found claims of ill-health and financial straits not supported by evidence, but ruled that since the Design Ordinance grants a six month grace period without talking about extensions or giving the Commissioner of Patents discretion in the matter, there was no mechanism for revival even were a compelling case made.

2 Comments | Israel IP, Israel Patent Office, Israel Patent Office Rulings, design, israel design ruling | Permalink
Posted by Michael Factor

Israel Patent Authority Refuses Revival of a Design Four Years’ After it Lapses

March 21, 2010

In Israel, registered designs are registered for 5 years. This period may be extended for two additional periods of 5 years each. i.e. up to 15 years. The renewal should be paid during the period that the design is registered, and the Israel Patent Office sends reminders to the registrants. If the design is not renewed in time, the applicant may renew retroactively during a grace period of up to six months, on paying extension fees.

In this case, design number 34297 lapsed on 26 April 2004 due to failure by the applicant to pay the renewal. It appears that during the grace-period, the original renewal was paid, but it is not clear that details were sent to the Patent Office. Also, the extension fees were apparently not paid.

The company, represented by its patent attorney, Matti Barzam, attempted to revive the application some 4 years later. The Review Officer and arbitrator of Intellectual Property, Ms. Shoshani Caspi rejected the revival application, stating that procedurally there was no basis in law for revival at such a late stage,  and that additionally, the applicant for revival did not have a case. She also noted that the fact that the design had lapsed was published in the Patent Journal, and third parties could rely on this to manufacture competing products.   

Leave a Comment » | Intellectual Property, Israel, Israel IP, Israel Patent Office, Israel Patent Office Rulings, design, israel design ruling | Permalink
Posted by Michael Factor

Wedding Dresses and Fabric Exclusivity

March 9, 2010

Mally Levy is an Israeli model. When she married   back in 2003, there were many other brides that wanted to be married in similar dresses and rented or bought them.

Galit Levi, the designer of Mally Levy’s wedding gown, calculated that by selling and hiring similar dresses, she would make a small fortune. When the orders dropped off faster than she suspected, she recorded a conversation with the fabric dealers in which they agreed that she’d been promised exclusivity, then hired private investigators to see which of her competitors were offering similar dresses. She sued the fabric wholesalers for breach of contract and other designers for passing off, and the competing designers and the cloth distributors for breach of contract regarding exclusivity for the fabric, unjust enrichment, damage to her reputation and passing off. The compensation claimed was NIS 2,532,652 (about US $ 840,000).

In a long, but beautifully reasoned and well written decision, Judge Achikam Stoler dismissed the claims, upheld the counter-claim of the fabric wholesalers and awarded legal costs to 4 or the five defendants. Instead of collecting in damages, Galit Levi ended up having to pay NIS 312,356 awarded to the defendants in legal fees and counter-claims.

The judge accepted that the plaintiff had proven that there was a verbal agreement between her and the importers as to exclusivity for the fabric, but found that such an agreement was poorly defined as to what the obligations of both sides were. Based on the testiment of the importer and of a leading designer, it was established that the nature of the verbal contract was a first right of refusal. In other words, the importer would import small quantities of the fabric and offer them to the plaintiff and, if the plaintiff would purchase the stock, would have exclusivity thereby. Otherwise, the importer could offer the fabric to other parties. The plaintiff understood the exclusivity as meaning that she was entitled to exclusivity for at least the season, however the importer, Trobolski Brothers LTD., were more convincing with their version, particularly as they were able to bring another leading designer, Danny Mizrachi, to collaborate their version. Judge Stoler ruled that although the Israel Courts had latitude to write details into a contract, there was a limit to what missing details and clarification he could add to a verbal agreement, and that the plaintiff had not established her version of what was agreed. 

The various designers were not necessarily using the same fabric but arguably, another flowery gifyur (French lacy fabric), of which there were a range available from various wholesalers. Indeed, the plaintiff had made Mally Levy’s dress from one fabric and the rental dresses from 54 meters (4 bolts) of a different version.

It was clear that Mally Levy’s dress was made from the 9.5 meters of flowery gifyur fabric that the supplier had in stock and that he had previously sold to other parties.

The various competing dress-makers all claimed that even had the importer offered some type of exclusivity, they were not bound by this agreement that they could not know about and were not party to.

the judge accepted that following A.Sh.I.R. it was possible to get compensation under the Law of Unjust Enrichment where the plaintiff had failed to register her design. However, the judge was not convinced that the plaintiff deserved wide protection as another Israel designer had exhibited a similar dress in a previous season and admitted that he himself had been influenced by foreign designers.

 The private investigators were able to order Mally Levy style dresses, but on cross-examination, admitted that they had no knowledge of fashion or the law, and thus were unable to give competent testimony that the dresses were similar enough to establish a case of unjust enrichment or passing off.  The judge ruled that in a case like this, the plaintiff should have produced her dress and those of the various defendants to enable the court to directly compare. A video of the model in the dress was inadequate.

Three of the four defendants were able to show that their dresses were somewhat different, one using pearls, where the plaintiff had used crystals, etc. Galit Levi’s creation is based on a bustier or corset, whereas one of the defendants was using a different type of body. One of the allegedly passing off designs was apparently a two piece creation!

One defendant who had not fought throughout but relied on the work of the others was not awarded costs. The others were each awarded NIS 50,000 (about US $15,000) in costs.

The importer also cleared up a further in debts for orders not paid for and for damage to his reputation.

Judge Stoler also ruled that the plaintiff had not established the accuracy of her figures for months prior to the copies being made. She had not isolated rentals and sales for the dress in question from other styles and had not proven that the drop in rental income was due to brides renting the allegedly plagiarized versions.

COMMENT

Wedding dresses tend to share some common characteristics. They are usually full length and white. They are made from expensive fabrics. Some have plunging necklines, others are more modest. Some have backs, others are backless.

To see Ms Galit Levi’s current collection: http://www.galitlevi.com 

It is likely that in a season, distinctive styles will be popular, and these may ape the dress worn by a celebrity or model. That which is considered in such a style may be different from a copy that is fairly considered as plagiarism.   

Most importantly, the dresses have to fit the bride, and many brides do not have the figure of a model.  That other designers chose to put a similar flower in the bride’s hair and claim that the dress was Mally Levy style was not enough to establish that Ms Galit Levy’s rights had been infringed.

This is a good decision. It is also an important one as it establishes what a plaintiff needs to prove to show that her design is being plagiarized.

Tel Aviv Central Court 2237-08-07 G. L. Couture LTD. vs. Trobolski Brothers LTD., Ovadia Cohen, Alon Solimny, Sabina Millenium LTD. and Hinuma Bridal Centre and Feminine Beauty LTD. 16 February 2010.

6 Comments | Israel, Israel Court Ruling, Israel IP, israel design ruling, passing off | Permalink
Posted by Michael Factor

Israel Patent Office Refuses Revival Of Design Applications, But So What?

January 4, 2010

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!

2 Comments | Intellectual Property, Israel, Israel Patent, Israel Related, design, infringement, israel design ruling | Permalink
Posted by Michael Factor

Jerusalem Court Issues Temporary Injunction Against Copycat Challah Cover Manufacturers

December 31, 2009

Karashi is a leading manufacturer of mass-produced Judaica with some 1800 product lines, and 200-300 new products a year. One successful line they do is a series of challah and matzah cloths, for ritual leavened and unleavened bread, that have the words Shabbat and Yom Tov (Sabbath and Festivals) embroidered on a translucent material, within a contrasting and opaque framework.

One of their clients decided that this style was so successful that they ordered a large quantity to be made directly for them in China. Understandably Karashi was somewhat annoyed by this and sued for IP infringement.

Since the products were conceived for mass production, they are not protected by copyright. They could have been protected by filing for registered designs but Karashi failed to do this. The main grounds for filing charges were thus Unjust Enrichment and Passing Off.

Judge Yosef Shapira of the Jerusalem District Court reviewed the various decisions he considered relevant and issued a temporary injunction against the defendants, forbidding them from marketing illicit challah covers with the words Shabbat and Yom Tov on a translucent material surrounded with opaque borders.

Comment

After the Supreme Court upheld the A.Sh.I.R. decision back in 1994, there are unregistered intellectual property rights available in Israel under the doctrine of unjust enrichment, at least where the court is convinced that the copying was with intent.  Since Shapira is supposed to follow legal precedent, it is not unreasonable to rule unjust enrichment. That said, though resplendent with references to the case-law, the decision appears to apply tests for the likelihood of confusion regarding trademarks to other areas of IP and in general shows little understanding of basic IP issues. Personally, I cannot see the unique design contribution of the words Shabbat and Yom Tov embroidered on a challah cloth. This seems to me to be totally generic to products of this nature. 

Shapira relates to property rights and infringement when there is no property and no infringement. It may be that there is unjust enrichment, but maybe not. Perhaps after a full trial, the defendants will find pre Karashi examples of challah cloths of similar designs. Whilst accepting that the A.Sh.I.R. Ruling is a relevant legal precedent, I was never happy with the decision. Registered rights last for a specific period of time and follow various rules. Unjust Enrichment is too vague both with regard to scope and with regard to duration. The interaction between Unjust Enrichment and the Basic Law, freedom of business activity, is not clear.

Granting a temporary injunction is particularly problematic on the basis of unjust enrichment, as there are no prima facie rights infringed, and temporary injunctions are by their nature, issued before weighing up the evidence, so the defendants should be considered guiltless until the plaintiffs rights to a monopoly are established. Competition that drives the price down is generally public interest and monopolies are not. If one can get preliminary injunctions under the laws of unjust enrichment, then why bother registering designs at all? Why limit oneself to something objectively new, why pay registration fees and why limit one’s protection to 15 years if you can sue under unjust enrichment without any of these limitations?

What is really missing, of course, is an up-to-date Israel Design Law rather than an out-dated ordinance. There should be limited period unregistered design protection, and probably a grace period. Novelty should be universal and not local.

The temporary injunction prohibits the defendants from manufacturing or selling their made-in-China challah cloths to third parties, directly or indirectly.  Somewhat surprisingly, in this intermediate ruling Judge Shapira has forbidden the defendants from directly or indirectly selling similar challah cloths in Israel or abroad. Thus these non-registered design rights are extra-territorial! I think this is a little beyond Judge Shapira’s jurisdiction.

The range of Karashi designs are found on their website. See

http://www.karshi.co.il/shop/retail/store/listCategoriesAndProducts.asp?idCategory=70

The intermediate ruling relates to rectangular cloths with opaque borders, translucent centers and the word Shabbat and Yom Tov embroidered thereon, with additional decoration being possible.  Not that difficult to have filed a design for that. In most things there are trends. Should the first person to introduce low slung jeans or some other clothing variation to be able to prevent others from doing similar designs? I can’t see why they should be able to without registration. It leaves too much at the discretion of the judge.  

Intermediate Ruling 8858/09 in 3402/09 (Jerusalem District Court)  Karashi International LTD., vs. Gift Center 2006 LTD., Ezer Deker, Ami decorative Products LTD. and Shlomi Nahisi.

2 Comments | Intellectual Property, Israel, Israel Court Ruling, Israel IP, design, infringement, israel design ruling | Tagged: , | Permalink
Posted by Michael Factor

Israel Patent Office Publishes Decision on Design for Kerb-Stone

December 14, 2009

 

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.

Leave a Comment » | Intellectual Property, Israel, Israel IP, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, Israel Related, design, israel design ruling | Permalink
Posted by Michael Factor

New Israel Design Regulations

December 28, 2008

In a December Circular (M. N. 69), the Israel Commissioner of Patents and Trademarks, Dr. Meir Noam, has ruled that that the legal requirement of novelty in designs registrations in Israel, as stated in Rule 30 of the Patent and Trademark Ordinance, now includes anything published on the Internet and accessible in Israel.

This ruling stands in direct contrast to the ordinance itself, since until now, local novelty in Israel was required. Essentially Dr. Noam has effectively changed that to absolute novelty, worldwide. The idea, per se. is not a bad one. It may prevent a third party from registering someone elses design. It also means, however, that if a design application was first submitted in Europe or the US, and published, it is no longer registerable in Israel, whereas until 24 December 2008, it was registerable.

Dr. Noam justified his stance by relating to case-law concerning the question of the territorial legitimacy of Israeli Courts to rule on Internet crimes, which though fascinating in and of itself, is of limited relevance to the issue in question.

Not only does the ruling lack a logical basis, but is controversial, since arguably this goes beyond interpretation and is essentially substantive legislation by a commissioner of patents who is essentially a functionary.
There is a substantive problem as well. Both the US and Europe have grace periods for registering designs. So I believe, does Japan. Despite the Israel Law being relatively relaxed in that it only requires local novelty, since a publication of a prior filing in another jurisdiction will now be considered as publication, in some instances, it will be more difficult to get a design in Israel now than in the major jurisdictions.

In my opinion, the job description of the Commissioner of Patents does not provide empowerment to change substantive law in a Circular to patent practitioners. Regulations and ordinances should be amended by the Minister of Justice. It is indeed the case that the Minister of Justice does not generally concern himself with Intellectual Property, but so what?

There is now a new Copyright Law, a couple of years ago there was an amendment to the Patent Law concerning pharmaceutical patent term extensions, and there was a first reading in the Knesset of a further amendment to allow publication of applications after 18 months. There have been attempts to legislate an Israel Design Law for some time, starting with an earlier Commissioner, Adv. Yoel Tzur (not to be confused with Maoz Tzur or Nurit Maoz ;-) ) back around 1980. This never even got as far as a first reading in the Knesset though.

It is not the first time that Noam has apparently over-reached his authority. He did something very similar regarding omnibus claims, deciding a couple of month back that this type of claim is suddenly incompatible with the Law, despite it having been compatible from 1967 to 2008, including the first five years of Dr. Noam’s serving as registrar. Dr. Noam has also decided to legislate what training trainee patent attorneys require, over and above the law, and with dubious authority to do so.

2 Comments | Israel, Israel IP, Israel Patent Office, Israel Patent Office Rulings, News, Opinion, design, israel design ruling | Permalink
Posted by Michael Factor

Haifa University Law Department Launches IP Prize in Conjunction with Israel Patent Office

December 9, 2008

Haifa University and the Israel Patent Office have just announced an IP Law prize open to all law students at Israeli law facculties. The prize, of 10,000 NIS, is to be awarded for the best and most relevant essay on IP by a student, whether undergraduate, post-graduate or doctoral.
Applications, drafted and formatted in accordance with standard Israel academic law citation practices, should be sent to the Law Facculty at Haifa University by 15 May 2009.

Leave a Comment » | Academia, Israel, Israel Copyright, Israel Court Ruling, Israel IP, Israel Patent, Israel Patent Office, Israel Related, News, israel design ruling | Permalink
Posted by Michael Factor

Israel Patent Office Ruling: Submission of Tender to Local Government not Considered Publication

September 23, 2008

In a well reasoned decision, concerning Voiding Action re Design Application  41669 to Primo, Israel Commissioner of Patents, Dr. Meir Noam has ruled that submitting a design for a bottle Read the rest of this entry »

Leave a Comment » | Intellectual Property, Israel, Israel IP, Israel Related, News, Opinion, design, israel design ruling | Permalink
Posted by Michael Factor

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