Publication on the Internet Prior to filing Israel Design Applications

Shoe publicity     Shoe publicity 2

Background

This ruling clarifies the extent that apparently pre-filing date publications on the Internet may be used to prevent design registration in Israel.

Although there is draft legislation making its way through the system, in Israel designs are currently protected by the archaic Patent and Design Ordinance of 1924, a legacy from the British Mandate. One of its oddities is that absolute novelty is required and there is no grace period. An even odder oddity is that only absolute local novelty is required and someone bringing a design into Israel for the first time is entitled to register it prior to importing and is entitled to up to 15 years of protection.

The previous Commissioner, Dr Meir Noam, grew tired of waiting for the Knesset and the Ministry of Justice to get their acts together and in a Commissioner of Patents Circular decreed that publication on the Internet, particularly in the design registers of foreign patent offices that are accessible on line from Israel via their websites,  would be considered as available in Israel and novelty destroying. Although arguably ultra vires, the Circular was never challenged. There remains a question as to what other Internet publications are novelty destroying, and the present ruling addresses this issue.

A third oddity is that unlike much of the rest of the world where Examination of designs is only for conformance to formalities, in Israel design applications are substantively examined in terms of novelty and the Examiners may search newspaper press-releases, Applicant’s website and, it transpires, various web-sites offering goods for sale.

This case

Naalei Nayot (1994) LTD submitted several Israel design applications including Application Nos. 55280, 55283,55288, 55289, 55291, 55270, 55271, 55278 and 55279. All these applications were submitted on 26 February 2014 in class 2(04) that covers footwear, socks and stockings.

The applications were submitted together with other design applications that were either registered or were abandoned due to issues raised during the examination process. These nine applications were rejected in a single office action of 17 June 2015 which resulted in the Applicant requesting a hearing that was subsequently held on 18 October 2015.

The nine applications fall into three categories as follows:

  • Applications 55288, 55291, 55270 and 55279 were considered as lacking novelty and originality as required by Section 30(1) of the Patents and Design Ordinance 1924. These rejections were based on two Facebook advertisements on the Applicant’s Facebook page. These advertisements from 20 February 2014 preceded the application date and appeared to show the shoes.
  • Applications 55280, 55283, 55289, 55291 and 55271 received office actions on 5 February 2012 that alleged a lack of novelty and originality as required by Section 30(1) of the Patents and Design Ordinance 1924 on the basis of sales illustrations from various advertisements. When the applicant responded to the objection, the Examiner again forwarded a publication on Naalei Nayot’s Facebook page.
  • Application 55278 was rejected on the basis of an advertisement on the Applicant’s website. In this instance, during the hearing, the Applicant withdrew the application and a decision issued on 18 October 2015.

Regarding the other eight applications, the Applicant does not consider the advertisements and the Facebook advert that the Examiner cited as being novelty destroying prior art.

The Applicant argued that advertisements by others are third-party Internet adverts that are not connected to the Applicant and should therefore be considered carefully. The websites are frequently updated marketing sites, and so their trustworthiness is suspect. In particular, the dated consumer comments relating to products, some of which are anonymous, may not have related to the specific products at all!

The Applicant supported their position from a ruling by Deputy Commissioner Jacqueline Bracha concerning design application 51593 and 50594 Tequila Cuervo, S.A. DE C.V. (9 June 2014), to the effect that a publication on a sales website does not necessarily knock out the novelty of a subsequently filed design application. As stated in paragraphs 44 and 45 thereof:

In our case, due to the nature of the website, it is reasonable to accept that the images and prices of goods shown will be updated in response to market changes. Unlike news-like content that is clearly dated or official press-releases and the like, the contents of advertising websites cannot be clearly dated and thus cannot be used to reliably establish a date for information published.

The above should not be understood to imply that only official websites of patent offices around the world have the required standard for the patent office circular (which states that applications for designs submitted in other jurisdictions that are accessible over the internet from Israel are considered as prior art preventing design registration in Israel where, under the current regime from 1924, only local novelty is required – MF) The circular allows other official publications to be relied upon including internet catalogs, and applicant’s websites so long as they enable a clear date to be established. Where the source of the advert is the applicant itself, in a press release or on applicant’s website, the applicant can respond to allegations of prior publication.

The challenge to the Office Action is, therefore, the date and trustworthiness of the advertisement cited by the Examiner as being prior art.

The applicant’s challenge to the Facebook publications cited by the Examiner fall into two categories. The first is that they are not full disclosures in that they do not show the design in full. Applicant submits that the cited publication shows a cupboard or a shoe box and the shoes included are not fully visible. The view is from above and from a distance, and does not teach the design to the extent it is taught in the application itself. The Applicant claims that the Facebook advertisement is not directed to consumers and is inherently different from sales sites that enable to the consumer to select and rotate the image of products displayed. They are inherently different from a catalogue or from a vendor’s website.
A second challenge raised by the Applicant is that the Facebook citations against the second group were first raised in a second office action during reexamination. Thus, with regard to the Facebook citation, we are not concerned so much with the fact of publication as per section 30(1) of the Ordinance, but with the degree of exposure of the design in the advertisements predating the filing date, with respect to their photographic quality.

Publication on General Sales Sites

After examining all the publications in vendors’ websites, the present Commissioner, Asa Kling, declared that the publications are reliable. As to the date of the publication, where this is not included within the advertisement on the website, it is possible to determine this from readers’ feedback which is dated. One can assume that if on a specific date there is a web surfer’s comment on an Internet page regarding a product for sale, that product was on sale at least on the date of the response. The content of the responses leaves no doubt that the products illustrated were those that are under discussion in this ruling.

One has to be careful when relating to Internet publications (see Request for Trademarks 187385 and 187386 (GHI) and the opposition to trademarks 200701 and 200702 (GHI stylized) in Gemology Headquarters International vs. Gemology Institute of America 28 May 2012 (henceforth GHI). In our case, after further consideration of the publications that the Examiner relied upon, it is determined that there is reliable information regarding the publication of the design in the general sales sites. As the inquiry stands up to the warning given earlier with regards to the Tequila case, the burden of proof is on the Applicant to show that the publication relied upon by the Examiner is unreliable and insufficient to serve as prior publication of the requested design.

As stated in GHI, the assumption may be rebutted by an expert opinion of by other means that the publication was not at the time indicated on the site, but the Applicant has failed to bring such proof.

This is similar to citations brought as prior art in patent applications. Of relevance in this regard is the notice from the European Patent Office concerning Internet citation (Official Journal EPO 8-9/2009 (the underlining is by Commissioner Kling):

“Establishing a publication date has two aspects. It must be assessed separately whether a given date is indicated correctly and whether the content in question was indeed made available to the public as of that date. The nature of the internet can make it difficult to establish the actual date on which information was made available to the public: for instance, not all web pages mention when they were published. Also, websites are easily updated yet most do not provide any archive of previously displayed material, nor do they display records which enable members of the public – including examiners – to establish precisely what was published and when…. Finally, it is theoretically possible to manipulate the date and content of an internet disclosure (as it is with traditional documents). However, in view of the sheer size and redundancy of the content available on the internet, it is considered very unlikely that an internet disclosure discovered by an examiner has been manipulated. Consequently, unless there are specific indications to the contrary, the date will be accepted as being correct”.

It is emphasized that as far as the surfers’ comments are concerned, it is evident that the website content was available for a long period, and this is sufficient to remove the novelty of (anticipate) subsequently filed design applications in Israel where there is no reason to assume that a host of readers comments all had their dates changed.

Having ruled that the dates are reliable, there is no dispute that the designs in the Internet website are fully disclosed and this renders the discussion regarding the quality of the Facebook publication moot, as is the question of when the partial publication on Facebook occurred. Thus the website publication of 55271, 55280, 55283 and 55289 is considered sufficient to render the applications unregisterable and the Examiner was correct to refuse them.

Publication on Facebook

There is a further claim that the publication on Facebook was never intended for the consumer. The Commissioner admits that he didn’t understand this claim. The intended recipient of a publication is irrelevant to the fact that there was a publication. The Examiner was correct that the fact the pictures were publicly available is sufficient to destroy the novelty of a subsequently submitted design application. This position is supported by the authors of Russel-Clarke and Howe on Industrial Designs, 8th ed., Sweet & Maxwell (2010), where, on page 13 it is stated:

In general there will be publication if articles to which the design is applied are manufactured, displayed or used in such a way that members of the public will or might see them. It is not necessary that the articles should have been sold. Prior use does not mean use by the public, but use in public as opposed to use in private.

According to the Examiner, the illustrations allow the shoes to be appraised by a visual test, in that the pictures of the featured design may be compared with other designs and what is required is a general appreciation of the design and not all the minor features thereof. The Examiner considered that the Facebook advertisement shows that stylistic elements of all the shoes shown in the illustration in sufficient detail to be novelty destroying.

Section 2 of the Ordinance defines a design as follows:

“Design” does not only mean the outline, shape, example or decoration that makes a mass-produced article distinctive, whether by hand, by machine, by chemical treatment, by a separate shape or an adjoined part, as it appears to the viewer in the finished product, and as can be visually determined. The term design does not include any method or principle or anything else other than a mechanical object.

In Appeal 7125/98 “Miforal Industries Jerusalem vs. Klil Industries LTD 57(3) 702 Nevo 8 May 2003, in paragraph 10 of the ruling this is explained:

The correct comparison needs to be made by comparing the general impression that a design makes on the eye of the relevant consumer. The emphasis is on the general impression from the article considered in its entirety., where the assumption is that the consumer does not have an experts attention to detail, but is also more interested that a passer-by Appeal 1187/94 Sela Concrete Devices LTD vs. Ackerstein Industries LTD [8] 291.

Thus in many fields, a design will be examined in its entirety rather than being analyzed into constituent elements. See  Patent Office ruling concerning designs 22424, 22433, 22783, 23767 Klil Industries LTD of 7 August 1997

By applying the general visual appearance test of the Ordinance as fleshed out in the case-law, the question in our case is whether the normal consumer exposed to a picture in an advertisement on Facebook would be sufficiently impressed by the general appearance that he would identify the shoes for which design applications were filed. The Commissioner considers this unlikely.

The nature of the Facebook advertisement is high-resolution coloured photographs. However, the photos show some of the shoes almost in their entirety and others are only partially visible. The soles of none of the shoes are visible.

As the Applicant noted, viewing the photographs on Facebook is insufficient to give a feel for the whole shoe, since each show is only shown from one specific angle which is a general front birds-eye view. The photos do not show the design elements of each shoe, such as decorative elements in detail. As the Applicant explained, apart from the question of the intention of the advertisement, the publication of the shoes in these advertising photographs is not the same as their display on a website showing all angles.

Furthermore, with respect to the articles under discussion,one cannot deny that the heel of a shoe is a significant design consideration. For many of the shoes shown, the heel is not illustrated, nor is the view from behind, which is of significance to the purchaser as will be detailed hereinbelow.

For example, with reference to design application number 55288,  the Facebook illustration does not show the heel engaging straps of the shoe, but only the front upper section.

With reference to Application Number 55279, the Facebook photograph leaves a difficulty in determining whether the shoe is a high-heeled shoe or a platform shoe. There is also a difficulty in understanding the internal profile of the shoe which is clear from the figures submitted. The show of design application number 55291 is not clear from the Facebook image which does not show clearly if the shoe has a high heel or not, and what the back-of-heel straps look like. These are, however, clear from the images of the application as filed.

Application 55270 is shown on Facebook, but the position of the back-of-heel strap and of other elements such as floral decorations is not clear. Thus it appears that the Facebook images do not reveal the design in its entirety.

Applications 25280, 55283, 55289, 55291 and 55271 are not clearly shown on Facebook.

In conclusion, Application numbers 55288, 55291, 55270 and 55279 were rejected whilst Applications 25280, 55283, 55289, 55291 and 55271 were allowed to be registered, (as noted previously 55278 was abandoned prior to the hearing).

Ruling by Commissioner Kling concerning various shoe design applications submitted by Naalei Nayot, 1 June 2016.

COMMENT

This ruling provides much needed clarification regarding to what extent a design shown in a photograph on an Internet website is novelty destroying. However, I respectfully submit that the commissioner is wrong in this case. (Actually that’s not strictly true. The Commissioner is right by definition. It is only a court ruling that can over-turn his decision. What I mean is that I think that the standard for an image to be novelty destroying should not be the same as for registering a design. A registration should include front, back, left, right, top and bottom plan views, and also a perspective view. I think that an earlier publication of a view that observers see should be adequate to anticipate a design application and to render it non-registerable.

After the Christian Loboton case, I understand that some people choose shoes because they have a particular colour sole and are willing to pay a premium for this. Actually this isn’t true. Some people are willing to pay more for a particular designer’s products, and will accept red soles as a distinguishing trademark. Clearly the arrangement of grips and studs on the soles of sports shoes have a purpose, and whether the ankle is strapped in or not is also of some interest, but, like the height of a heel, it is functional. Women wear high heels to look taller (yes I’ve also seen Kinky Boots and accept that they also cause the buttocks to clench sexily). Essentially heel size is functional. I think that people primarily choose the aesthetic elements of a shoe design based on the impression it provides to someone looking down from in front. It is for precisely this reason that the Facebook adverts show the shoe from this perspective.  A good design will be available for different sports with different grips on the sole and, I suspect, will be available in low, medium and high heel options. Furthermore, whether a shoe has high heels or not is usually visible from a raised front view.

Without viewing the particular images and the specific shoe designs it is difficult to challenge the Commissioner’s ruling, but I am skeptical.  I think that Former Deputy Commissioner Smulevezh was correct in the Ackerstein kerb-stone decision to rule that one views kerb-stones from the top and front and thus a publication not showing the underside and back surfaces is still a publication. I think this should apply to shoes as well; most people wear them on their feet at ground level. They chose shoes to compliment outfits based on what the shoes look like from a bird’s-eye view from the front. This is not a bird’s-eye view at all. It’s the view that others, and indeed the wearer himself / herself see.

I can accept that a purchaser may be interested in what the inside of a shoe looks like, but I do not consider this to be part of the aesthetic design protected by a design registration. Shoes are designed to be worn. When worn on a foot, the inside design features of a shoe are hidden, as is the sole.  I would expect Naalei Naot to complain about competitors making shoes that are otherwise identical except viewed from underneath or when considering the inside. This is why they register designs. An otherwise identical shoe to one that is registered design, that is differentiated by having a tartan lining and a manufacturer’s signature written on the part of the sole connected to the heel that does not get appreciable wear, should, in my opinion, be considered infringing.

One Response to Publication on the Internet Prior to filing Israel Design Applications

  1. […] On publication on the Internet Prior to filing Israel Design Applications […]

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: