In Europe, one can register designs for automobile parts. However, as a matter of policy the European courts will not enforce car manufacturer’s claims against suppliers of generic parts, considering that the public interest is served by enabling them to repair their cars cheaply. This decision clarifies the situation in Israel.
E. Fetaya LTD. Electro Mechanical products. http://www.fetaya.com applied to register a design for an AC power plug, i.e. an electrical power connector.
Their novel plug consists of three elements which can be assembled without a screwdriver or other tool. The original application as filed showed the separate elements from all sides. The elements are reproduced below:
Technical readers will have little problem seeing how the three-piece puzzle fits together. The design is somewhat different from standard plugs, but in the main is dictated by functional conisderations such as compatibility with flexes and standard Israel sockets.
In a first office action, the Examiner decided that there were two separate elements: (a) the complex construction of the plug, and (b) the locking element. The Applicant was requested to choose one element and to supply replacement figures (line drawings), and if protection for the second element was desired, the applicant could file additional design applications that would bear the original filing date.
In a first response (and not unreasonably), the Applicant pointed out that the two elements were complimentary parts of an integral whole, and were not to be considered separate entities; this being the design concept.
A couple of months later, the Applicant submitted a new figure showing the assembled power plug.
In response, in a second Office Action, the Examiner alleged a lack of similarity between the original figures as filed and the new figures. Additionally, the separate figures of the components were not acceptable.
The Applicant tried in vain to explain that the parts were sold as a complete unit, and not as the separate components and if the separate parts were unnecessary, why require submission of replacement figures for them?
Three months later, following a telephone conversation discussion with the Head of the Design Division, it was agreed to split the application into three separate applications: one for each component – front, back and locking element.
In a third Office Action, 28 months after the original filing, the Design Department ruled that the items shown in the application were not protectable as a design at all, and issued a final rejection.
A month later, the Applicant appealed to the Commissioner to consider the case based on the file-wrapper and pointed out that the Design Ordinance of 1926 (still in force) allows disassembled views of devices to be filed.
Additionally, the applicant pointed out that design registrations for various parts such as rubber gaskets and seals and profiles of aluminium extrusions for window frames were regularly applied for and issued by the israel Patent Office. In a creative argument, the applicant claimed that at that stage, the parts were also sold separately. The Applicant requested that the final rejection be reconsidered rather than the appeal to the Commissioner being considered an Appeal, which would incur unjustified expense. Finally, the Applicant suggested that the parts could be considered a set under the Section 5 of the Design Regulations of 1925.
The commissioner allowed the assembled plug design to issue as the original application, since the parts were all included. The logic being that despite most of the unique design being functional and internal and therefore irrelevant, the assembled construction did differ slightly from other plugs on the market and these differences were partially aesthetic and therefore registerable.
The divisional applications for the individual components were refused as even if now sold separately, they are simply replacement parts and not registerable since parts required to fit into a space as part of a machine were not registerable. The Commissioner cited an English language text-book: On Industrial Designs by Russell-Clarke and Howe, Sweet and Maxwell (2005).
The two passages quoted follow:
“A design right shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function” Chapter 2-23. This is actually section 7(2) of the European directive:and is based on the UK Design Law CDPA 1988 Section 213(3)(b)(i).
“One purpose of this “must fit” exclusion would appear to be to prevent monopolization of replacement parts by a maker of original equipment. Replacement parts may be needed to repair a machine by replacing a part which is worn out or broken…”. Chap 4-16.
As to the set argument, the Commissioner suggested that the regulation related to something like a set of artificial fingernails.
COMMENTS
The Case and the Decision
The examiner and the Agent for the Applicant could have handled things better. The final ruling was correct, but the time delays and aggravation involved in getting the design allowed were unfortunate and unjustified.
I have had similar experiences with trying to get designs for clock hands registered, and sweated blood trying to explain why I showed the parts separately and assembled on a clock face (disclaimed) at different times, and had various inane requests thrown at me like showing the hands from all six-sided and in isometric projection, followed by a request to show the hands opened and closed. I tried citing the regulations and received the response from the Examiner that she didn’t know there were regulations for designs as well [as for patents and trademarks]!!
Wider Implications
The significance of the decision is, as often is the case, in the obiter and between the lines.
- The Commissioner refers to a European textbook and the European directive.
- Israel case-law is not cited.
I have tried in vain to find Israel court decisions in cases brought by original automobile and printer manufacturers against importers of generic spare parts. Grounds for such actions may include registered design infringement and unjust enrichment. It seems that the Commissioner couldn’t find any Israel decisions either…
In Europe, designs are registered without substantive examination, so one can register automobile parts. However, the courts will not grant injunctions or damages to the car manufacturers. This is a matter of policy. They consider that the public interest is to enable cars to be repaired cheaply and efficiently, and they therefore prefer to prevent the manufacturer from selling the car twice by awarding monopoly rights that enable extortion of locked in consumers.
It appears that the commissioner is taking this position, at least as far as registering internal functional parts are concerned. Possibly, repalcement wing mirrors and headlamps might be considered differently. (Since my driving and parking skills are inferior to my IP acumen, I am aware how expensive the suppliers parts can be).
At least until now, it has been possible to register designs for ink and toner cartridges in Israel. In previous discussions with the head of the Design Section at the Israel Patent Office, it transpires that at least prior to this decision, he had no qualms about registering car parts.
As to the fingernail example of the meaning of a set for design purposes, this seems to be an overly narrow interpretation. Until now, it has generally been considered that the various elements in a set of cutlery (flatware / silverware), the various chessmen, and other elements sold together would be considered as a set that can be filed in a single application.
Posted by Dr Michael Factor 
