Design Registrations Cancelled After Court Rules Lack of Novelty on Filing Date

Eli Shafir owned three registered designs – 44798, 44799 and 44800.  On suing A. A. Maayanot LTD. for infringement in the Haifa District Court, A. A. Maayanot LTD. filed a cancellation action in the Israel Patent Office. Judge Dr. Adi Zarkan of the Haifa District Court ruled that the marks were invalid since they lacked absolute novelty when they were filed (there is no grace period under the Design Ordinance).

Consequently, the Patent Office cancelled the designs. The parties agreed to allow the patent office to decide appropriate costs. After comparing similar actions in Termo Gumi  see https://blog.ipfactor.co.il/2011/04/06/designs-for-rubber-seals/ and in Wolfman vs. Ackerstein  https://blog.ipfactor.co.il/2009/12/14/israel-patent-office-publishes-decision-on-design-for-kerb-stone/ and on weighing up the relative amounts awarded and the amount of material in each file, the adjudicator of Intellectual Property ruled costs of  NIS 2000 plus lawyer’s fees of NIS 10,000.

COMMENT

The decision doesn’t relate to the nature of the goods at all.  However, the court ruling indicates that the designs related to water purifying equipment imported from China. See ‘ת”א (חיפה) 21858-08-10 – אליהו שפיר ואח’ נ’ א.א. מעיינות בע”מ ואח

We note that under the relevant somewhat archaic design ordinance, an importer can register a design for something imported from abroad. Only absolute local novelty is required. Apparently, this wasn’t available locally.

it is not clear why the adjudicator compared this to other design rulings and not to patent or trademark cases, of which there are rather more and these are certainly more recent.

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