The Minimal Requirements for Design Registration in Israel

Israel Design Application Number 55635 is for a “Wardrobe Integrated with Roller Shutter” [sic]. From the Hebrew title, I presume “Wardrobe with Integrated Roller Shutter” The Application was filed on 25 May 2014 in class 6(04).

The Figures, reproduced below, were a little primitive and were rejected as the Examiner considered they showed a wardrobe (closet) and a roller blind, but not a specific design for a specific combination of the two. Thus, the Application described a concept and not a specific design for an article for manufacture and thus could not be registered.

wardrobe design

In response, the Applicant responded that the Figures did not show two separate articles, but rather showed a wardrobe with built-in roller blind. Furthermore, the combination was a new article of manufacture that attracted the interest of wardrobe purchasers, resulting in this wardrobe selling better than others [presumably with sliding or hinged doors, but it is a long time since I went wardrobe shopping – MF].

The Examiner was not convinced and argued that the figures were schematic and indicated a concept and not an article of manufacture. For example: the wall thickness is not indicated; the tracks for the roller blind are not shown; it is not clear if the blind rolls upwards or downwards [surely both – MF] and there is no switch or strap for controlling the blind [here the Examiner is presumably drawing an analogy to the roller window blinds that are ubiquitous in Israel and are activated by a strap, usually at the right side of the wardrobe. Here the term roller blind is actually misleading. What generally occurs in wardrobes, cupboards and the like, and is particularly common in kitchens, is that a verneer door is cut into strips that are then mounted onto a backing cloth. The door is thus able to articulate, and is pushed up (or sideways for vertical strips) and along a track that goes under the roof or the cupboard and down the back so that when open, the door fits over and behind the void. That as may be, what is clear is that the Applicant and Examiner are not understanding each other – MF].

The Applicant requested a hearing before the Commissioner, which was scheduled for 3 February 2016.

Prior to the hearing, Applicant submitted a Statement of Case in which he argued that the applied for design is not merely a direct functional result of the intended use and the combination of roller blind and cupboard, and that although combining known elements, was a unique combination of elements never hitherto combined.

The Applicant also noted that he’d obtained a Notice of Allowance in the US for what he considered an identical application.

 

US design

The Applicant and his legal representative (Adv. Yaniv Kehat) attended the hearing armed with the US figure but not the Israel figure, which he considered identical.

The Commissioner considered the US Figures more detailed and clearer, and that they provided wall thicknesses, for example. What was interesting was that the Applicant considered these unnecessary detail and of minor relevance to the appearance of the wardrobe.

The issue, therefore, is what is the minimum detail required to register a de minimis design under the Israel Design Ordinance 1924?

Section 2 of the Ordinance states:

A ‘design’ means the outlines, shape, example or decoration of an article of industrial manufacture, whether by hand, by machine or by chemical action., separate or together with the article, that are clearly perceived by the viewer of the finished article, but does not include a product or building principle or anything that is essentially a mechanical device.

From the above, and as affirmed by the Supreme Court in 7125/98 Micromal Industries Jerusalem vs. Klil Industries, P.D. 57(3) 710-711:

The protection is given for the unique design of an article, as perceived and noticed by the relevant consumer, in such a manner as to influence the choice of purchase.

The end clause of the definition of design in the Ordinance states that a design that defines the functionality of a device cannot be protected as a registered design. the meaning of the term functionality is as defined in Patent Law. There is always a tension between non-protectable functionality and registerable designs, see 430/67 Sharnoah LTD et al. vs. Tnuva Agricultural Cooperative of Israel LTD., P.D. 22(1) 114-116:

A mechanical device whose structure is dictated by usage, may be patent protectable but cannot be registered as a design. The only registration that the Commissioner can give is for a specific design which provides more than that needed for it to perform its function, but the fact that a specific design has functional advantages does not preclude it from being registered.

The functionality of an article does not prevent it being registerable as a design…There are those who say that the most functional design is the most aesthetic, but where a design is totally dictated by the function that the article is to fulfill and it is known that at the time of registration of the design there was no similarly efficient alternative for achieving the desired functionality, it cannot be registered as a design.

The reason is that where other designs for achieving the intended utility exist, one can no-longer claim that the design is totally dictated by function, and there is no mixing of design and patent registration, as someone else can fabricate his article with similar functionality, but a different design that the registration cannot prevent. 

These considerations were used in the 2010 ruling concerning design numbers 44701, 46834 and 46835 to Petia LTD where it was stated:

One should consider whether the entire design is defined by the function. That means whether the design has an aesthetic element or whether the whole design is functional.

Thus the design application should provide the view that attracts customers and should be more than functional. the Examiner should consider whether a finished design is submitted, such that consumers can tell the difference between protected and non-protected designs with similar functionality.

As to the quality of the Drawings – this issue has been discussed with respect to 47337 and 47338 Global Opportunities Investment group (2/8/12) section 14:

The Figures and drawings of a design are the common language between the designer and the consumer who purchases or uses the article and whose eye the examiner is supposed to judge by 7125/98 Micromal Industries Jerusalem vs. Klil Industries, P.D. 57(3) 710-711; 1187/94 Sela vs. Akerstein 5756 (2), page 291. The currently submitted images are not in the form that the consumer can understand. The requirement is different from that of Engineering drawings which provide full details for assembling or constructing an article and are a common language between designer and manufacturer, and require dimensions, details of hidden elements, sections and internal elements which are not part of the design (for registration purposes).  The requirement of the design illustration may be learned from the purpose of the registration and from the relevant case-law: 

The importance of design registration, like all other public registrations, is to provide public information regarding that protected. If the certificate does not clearly show what is protected, this purpose is not achieved (TA (central) 09-06-21130 Oren Yoram Packaging LTD. vs. Scholnick H.Y. LTD et al. 7 Oct 2010 paragraph 21). The figure itself must teach the properties protected by the design. If the figures do not show the main property in primary clear view, it must be concluded that such a design registration does not protect this property – section 22.

The appearance of the design should cover the attributes and aspects of the specific article as the finished good appears. A design will not issue for a figure that covers a range of different articles, as the scholars Russel Clarke and Howe wrote in their book: On Industrial Design (8th ed.), page 122, section 3-080:

“If the application for registration is framed in such a way that what is sought to be registered is not a single appearance (i.e. of shape or pattern), but a range of different appearances, which all embody the general features which are claimed by the applicant, then those features are too general, and amount to a method or principle of construction. In other words, any conception which is so general as to allow several different specific appearances to be made within it, is too broad and will be invalid.”

And from the general to the specific:

From the drawings submitted to the Israel Patent Office one can only see the general lines of the cupboard without design features that emphasize the uniqueness. For example, the figures do not provide the capacity, the wall thicknesses and the design of the roller blind. the top view is not clear – from the front and top there seems to be something there, but from the isometric projection there doesn’t seem to be anything covering the roller. Consequently the design is not clear enough to relate to a specific wardrobe and one could conclude that the figures are schematic for a whole class of wardrobes with different wall thicknesses.

The figures submitted (and allowed) in the US provide this additional information and give an indication of wall thickness and capacity.

At this stage, before substantial examination, I see no reason not to allow the Applicant’s conjecture that there are different ways of combining a roller blind and a wardrobe. Nevertheless, the Israel application should show the unique design feature of the combination, whereas it merely gives the general outline, and, if it were allowed to be registered, would provide protection for the combination without limiting to a specific design.

The design application may therefore be rejected. However, Applicant has requested switching the figures to those (more detailed ones) allowed in the US which are not schematic. This option came up at the hearing, and Regulation 53 allows figures to be corrected or switched if they are procedurally flawed and the amendment does not disadvantage third parties and the Commissioner considers it acceptable. This is allowable so long as the replacement figures are clearly for the same design and do not affect the priority date or require the Examiner to perform additional searching.

In this instance, the differences are minor but important. The US figures are for the same design but provide a design whereas the Israel figures are schematic illustrations of a design concept. The US design is clearly a narrowing of the protection and does not add new matter.

In conclusion, Applicant may replace the Figures on record with those of the US registered design patent within 30 days, or the Examiner’s objections will remain in force.

Ruling concerning Design Israel Application No. 55635 Balas Design LTD, Asa Kling, 20 April 2016

COMMENT

Note, the Commissioner has NOT stated that the replacement figures will be allowable. The obvious problem is that the US accepted the design.

In this instance, the Applicant was confused between a patent which can issue for a unique combination of elements, and a design. That said, a design for a wardrobe is quite interesting due to its simplicity.

Wardrobes are essentially boxes, but they have relative height-to-width-to-depth proportions, albeit typically standard and defined by the function, where the height of the rail should enable dresses or knee-length coats to hand clear, the overall height should fit into a room. The depth should accommodate hangers and is typically about 55 cm. There is generally internal features such as a hanging rail or shelves, however, these can be disclaimed. The width of wardrobes with hinged doors are usually multiples of 40 cm. A rail of longer than 80 cm typically bends too much. The thing about roller blinds or sliding doors is that they can be any width. Sliding doors do not allow unrestricted access as typically there are two doors and when open, half the wardrobe is inaccessible, and the doors can be moved from one side to another. A roller blind is a good solution for a door, in that the entire front may be opened at once, and there are no protruding doors to walk into. Thus roller blind provides additional functionality that other door systems lack.Then again, roller blinds require maintenance and roller mechanisms are inherently less reliable than sliders or hinges.

The Applicant has a valid point regarding wall thicknesses. If the design was granted for something where careful measurement showed that the wall thickness was 20 cm, and someone used 1 inch plywood 2.6 cm to fabricate what is otherwise the same design, I think a judge would see this as copying and the design as infringed. There is, therefore, an interesting de minimis issue of what is required to define a box with a roller blind as a design for a wardrobe.

Why should the inside matter? Come to that, when purchasing a wardrobe, the top (and back views) are rarely of importance. The purchaser does not see the top which is typically above eye level. See the 2009 decision for similar consideration regarding bottom and back surfaces of a kerbstone.

The deficiencies, or otherwise, of the Figures is, in my opinion, of limited interest. The real question is what is required for a design to be considered registerable and not merely functional.

Arguably a roller blind for a wardrobe is an aesthetic feature. I would argue that it is a functional solution for cases where swing doors are inappropriate due to confinement, whilst allowing access and viewing of the entire contents which sliding doors do not accomplish.  (I don’t accept that cupboards with roller blinds have never been thought of. Kitchen cabinets with roller blinds exist and shop display cabinets, particularly for chilled goods, often have a roller mechanism for closing at night. Storage units sometimes have roller blind doors. Thus I would not consider this a patentable invention).

The problem is that wardrobes as objects of manufacture come in a limited range of standard sizes. This is a rectangular box of standard dimensions with a draw blind door. Filing half a dozen variations will prevent competitors. Sure, a carpenter could still make one-off solutions, but this would effectively corner the market for prefabricated wardrobes. I don’t consider wall thickness as being an issue. The design is the same whether the wardrobe is fabricated from plywood, timber or medium density particle board (MDF).

I did a little ‘googling’ and found plenty of websites offering wardrobes with roller blind drawers of different types. Should the ‘mere functionality’ objection be used exclusively for refills and internal spare parts having design requirements that are defined by usage, to prevent manufacturers of cars and the like having a monopoly on spare parts?

This case is of relevance to the smartphone wars in that to a large extent, Apple’s design is minimal and simple, creating an elegance. However, to obtain a large screen in a small device of minimum thickness with rounded corners for protection leaves little options. In Apple vs. Samsung, the European and US courts found differently and whilst cynics will state that the US found in favor of a US company, the case was a difficult one to call.

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