Protecting Extrusion Profiles by Design Registration has Gotten Tougher

June 29, 2018

Building products sold by length, such as aluminum profiles used for window frames creates a problem. Leading manufacturers in this competitive market want to mark their products to discourage customers purchasing cheaper alternatives. Quite apart from the fact that end users do not generally want makers’ marks conspicuously showing on their window frames, such marks have to be stamped on which is time consuming. 

In the past, Adv. Adi Levit, then of Seligsohn et Gavrieli representing Klil, a leading aluminum profile manufacturer, created a new solution; registering profiles as design applications.

Strictly speaking, this could have been viewed as manipulating the system since most of the elements of the profile are strictly functional. Elements that are not viewable in the finished product when installed are not really design elements, and extruded scratch marks are more correctly trademarks, but often lack the inherent user recognition to be registered as such.

Strictly speaking, this could have been viewed as manipulating the system since most of the elements of the profile are strictly functional. Elements that are not viewable in the finished product when installed are not really design elements, and extruded scratch marks are more correctly trademarks, but often lack the inherent user recognition to be registered as such.

The Deputy Commissioner Jacqueline Bracha has now revisited this somewhat specialist issue. The name of applicant, representative and details of the design application number have been withheld so this case can be referenced as Ruling re Design XXX to Applicant YYY represented by ZZZ, by Jacqueline Bracha, 27 May 2018. The pictures used to illustrate this write-up are just that, pictures. They may or may not represent the product ruled on here.

Prosecution History

This ruling concerns a couple of design applications submitted on 1 Feb 2016 and 17 March 2016 respectively, both for profiles. The first Application was examined on 20 April 2016, and the Examiner considered them lacking in novelty in light of earlier registered designs of the same Applicant and thus registration was prohibited by Section 30(1) of the Patent and Design Ordinance 1924. The second application was examined on 14 June 2016 and a similar Objection was raised.

window frame 2

On 7 June 2016, representatives of the Applicant met the Examiner and the Head of the Trademark Department with the intent to persuade them otherwise, based on the differences between the application and the registered design as viewed. The Applicant argued that the differences were more than the similarities, and were not purely functional. The Applicant showed examples of window frames made from both the registered and the new profiles to emphasize the difference between them. At the end of the meeting, the Applicant was invited to submit their claims regarding each application in writing, emphasizing the differences.

On 21 July 2016, the Applicant responded to the Office Actions and emphasized the differences, referring to the drawings.

There were several further rounds of correspondence between the Applicant and the Examiner, during which the Applicant was requested to provide images of the finished product [presumably the window frame – MF]. The main difference that the Applicant noted, was that the new Applications show a ‘clean’ window frame, whereas the previously registered ones have a ‘rustic’ look, since the slot running along the front surface of the profile was removed.

On 20 April 2017, the Applications were rejected. Hence the appeal before the Deputy Commissioner.

It is emphasized that Design Application No. WWW had successfully been registered, despite the similarities to other registered profiles since the Examiner was persuaded that the differences were significant. It is noted that also in this case, the differences are on the front of the profile, which creates a new impression due to the lack of the slot.

The Applicant submits that the Examiner should have registered the design applications since other designs in the same series have been registered. Furthermore, all the designs in the series could be registered as a system.

The Deputy Commissioner notes that to the extent that other designs were erroneously registered, this does not oblige the Patent, Design and Trademark Office to repeat that mistake. See for example Appeal 66183/06/11 Shmuelovich  vs. State of Israel, 26 October 2014.

The Authority can change its ruling from a decision given in error and is not obliged to repeat that error.

It will be noted that the Registrar of Designs is NOT authorized to cancel a registration unless a third party requests cancellation based on a prior art publication –Appeal 733/95 Arpel Aluminium ltd vs. Klil Industries ltd, 51(3) 577. Thus even if Ms Bracha decides that the current designs should not be registered, and if this implies that previously registered designs were allowed in error, that does not authorize her to rule that such previously registered designs  should be cancelled. In light of this, Ms Bracha refrained from opining on how this decision affects previously registered designs.

The Applicant’s Claims

extrusion profiles

Miscellaneous extrusion profiles

The Applicant claims that there is room to allow the registration of the series of designs as a system application, since the profiles will be purchased together to assemble a finished article, such as a window. The Applicant submits that this assertion conforms to previous patent office rulings.

As to the registration of the designs, the Applicant submits that there are significant differences in form between the previously registered designs and that of the current application.  These include both elements on the visible surfaces of the installed frame, and indentations and slots that are not visible in the finished window, and that the new designs presents a clean modern line, whereas the registered designs present a more rustic appearance. The slot [could be indentation. some sort of depressed feature is indented –MF] along the front face has been cancelled, and this creates a purposefully different appearance. Furthermore, this results in additional differences in other parts of the profile.

The Applicant further claims that in light of the similarities between the inner lines of the design, they are registerable with a declaration of novelty regarding the front surface. Furthermore, the relevant ‘eye’ is that of the end user and the architect, and thus it is the visible surface of the installed window frame that matters.

RULING

Section 30(1) of the Patent and Trademark Ordinance 1924 sets out the conditions for design registration as follows:

(1) The registrar may on the application made in the prescribed form and manner of any person claiming to be the proprietor of any new or original design not previously published in Israel register the design under this Part.

The main question in this instance, is whether, under the Ordinance, the applied-for designs are new with respect to the registered designs. In other words, are the changes that the Applicant proposes sufficient to establish novelty or not?

There is established case-law that requires that when making the comparison between products, or a design Application and the prior art, the design should be considered in its entirety, but with an emphasis on the features that draw the eye,  However, functional elements should not be considered . Thus the similarity in the functional elements does not hinder registration, but the differences do not help either (see Russell-Clarke and Howe on Industrial Designs, 8th Ed., p. 146 (2010). See also the ruling regarding design applications 50200, 50202, 50519, 50902 and 60909 to Victualic Company, 12 February 2012.

These considerations are the result of the intention that design registration protects new forms of desirable objects that attract the eye of the consumer, as ruled in Appeal 7125/98 Mipromal Industries Jerusalem vs. Klil Industries p. d. 57(3) 702, , 8 May 2003, on pages 710-711 of Judge Rivlin’s ruling:

The design registration is intended to provide protection for novel forms of products. The protection is intended to protect the individual’s interest, but also that of the public by encouraging the development of new or original aesthetic designs. The protection is given for the unique form of the product, as the eye discerns it…the form should draw the eye of the relevant consumer in a manner that influences his choice of a specific product. Together with this, in addition to the positive requirement of drawing the eye, protection is not available – due to the end of the clause – for articles that are fully functional, i.e. having purely functional forms.

….

Given this general rule, one has to consider whether the differences are sufficient and, in this regard, it is not the number of differences that matters, but the effect of them taken together.

However, minor differences need to be significant and not merely minor differences that are known in the relevant industry.

As a rule, the design should have a form or decoration that is substantially different from that known previously, and minor differences as generally accepted in industry are not sufficient to render a design novel or original under the ordinance. See Seligsohn, The foundations of Copyright, Trademarks and Designs, page 196.

Application of these general rules to this instance leads the Deputy Commissioner to conclude that the present applications cannot be registered. The differences that the Applicant points to boil down to the removal of a slot on the front face of the assembled frame. The other differences are simply the result of the cancelling of this slot.

window frame

The Applicant’s claim that the relevant eye is that of the customer or the architect does not help since, if this was the case, there would be no point registering the hidden surfaces [typically the section through the profile – MF] but only the form of the finished window. However, the Applicant has registered hundreds of profiles that include internal cavities and inner surfaces that are not visible in the assembled and installed frame, and many of them claim novelty for the inner parts.

Windows-frames

Even if she were to accept the Applicant’s position that the current applications be considered, unlike in the past, only with regard to the visible surface of the assembled and installed window frame, the Deputy Commissioner ruled that a smooth frame without any extruded protrusions or indentations is not new. Although the cited frames did not have a clean front surface, such a front surface is known in other extrusion profiles for frames.

In other words, when considering the profile as a whole, it is insufficient to refer to differences that exist in the concealed parts of the product and on the front face. These differences are trivial and do not impart novelty to the design. As to the front surface alone, the appearance is regular and accepted in the industry. It is noted that if the Applicant desires to be examined on the front face alone, the remaining sections should have been disclaimed with dashed lines. By not doing so, the Applicant has indicated that the concealed parts are integral to the design and the extrusion should be considered in view of its cross-section under Section 2 of the Ordinance.

Not only the Applicant considers that the profile is the complete article, but the Supreme Court in re Klil held this and accepted the finding of the District Court and ruled that:

In this instance, the District Court held that the correct comparison between the products has to be by comparing the profiles as sold – as six meter long extrusions, piled up on shelves such that the customer can see the section – and not as they appear when joined with other elements and installed. In consequence, it is insufficient to consider only the external appearance of the profile, as they appear to the final customer, rather one has to consider the similarities prior to assembly, from all angles, including the section.

Similar to the Court of First Instance, I also hold that the differences indicated are insufficient to rule out infringement, since the general impact of the appearance of the section and the visible surfaces leads one to conclude that the new profile is a blatant copy of the registered design. When applying the appearance test it is insufficient to go into the minor aspects of the design and there is no need to examine the product with a magnifying glass to determine the differences. As the District Court found, the profiles have the same slots, protrusions and indentations, and similar dimensions. The differences noted are insufficient to be memorable and so the District Court seems to be correct that the relevant consumer is likely to confuse the profiles, particularly where he comes across them separately. It is noted that the District Court determined as a matter of fact that shelf fillers do not necessarily pile up these profiles in adjacent piles.

Since the Israel Supreme Court has ruled on how profiles are to be considered under the Patent and Design Ordinance, the Deputy Commissioner did not see herself as having the freedom to dissent from their determination. However, she noted that it is possible that with the entry into force of the Design Law 2017, it may be appropriate to reconsider the appropriateness of this case-law with respect to registered designs.

The Design Law draws inspiration from the European legislation COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community designs and the basic definitions of the design and product in the (new) Law are taken from it – see the words of explanation of the new law from 6 July 2015).

The term product (מוצר) [perhaps literally object of manufacture] replaces the [archaic] term חפץ [desirable in the sense of a product, chattel?] that appears in Section 2 of the Ordinance, and is similar to the term that appears in the European legislation. The definition reflects, inter alia, the changes in technology since the Ordinance was legislated.

The term ‘design’ replaces the term ‘example’ that appears in the Ordinance. The term is not intended to widen or narrow the scope of protection that the law provides. The new term implies, inter alia, the technological changes that have occurred since the ordinance was legislated. The definition is the same as that found in the European Law, and emphasizes that the design is the general appearance of the object or a part of it, that consists of its visual elements.

It is noteworthy that in 2014, the European Office for Trademarks and Designs (then the OHIM and now the EUIPO) by which the majority of the elements of a profile are not registerable as a design, appear from the front face and marks thereon:

“As far as understood from the submission of the Holder technology driven features and mechanical fittings form up to 95% of the design of the profile, and the only features in which the competing products may differ, are those indicated in its submission, i.e. curving of the walls and the marker. In other words, all essential features, 95% of the appearance of the profile, fall in the exclusion pursuant to Articles 8(1) and (2) CDR. Should it be the case, the design has to be excluded from the protection as it does not fulfill the requirements of protection of a Community design. (ALUPROF S.A. v. ALU SYSTEM PLUS JJM KUCHARSCY [2013] OHIM)

The European Trademark and Design Office recently affirmed this ruling in re INDECO INDECO S.A v. BONARI Sp. z o.o. [2017] p.5 EUIPO (published by Darts IP).

The Deputy Commissioner considers that this sheds light on the question raised by the Applicant as to whether the profiles can be registered as systems of manufacturables under regulation 5 of the Design Regulations 1926, which will be replaced by Section 1 of the Law when it comes into effect.

The condition for registering manufacturables as a system under the Law, is that “the visual differences are trivial.” If we consider the appearance of an extrusion profile from all sides, including internal elements, and relate to the differences between the projections, protrusions, slots, as significant and important differences, then any differences in such protrusions and slots, even those required for coupling the different elements together,  would be sufficient to prevent them from being registered together. However, if the profile is examined ONLY from the outer face visible to someone looking at a window or door frame, all the profiles that link together to create the door frame could be registered as a system since they would then have identical appearances, or only insignificant differences.

That said, since there was no request to register the profiles as such a system in this case, and since she had determined that the designs are not new, the Deputy Commissioner did not see herself required to address this question under the current law.

In conclusion, the application for registration is rejected.

Ruling re Design XXX to Applicant YYY represented by ZZZ, by Jacqueline Bracha, 27 May 2018.

COMMENT

We note, without enthusiasm, that the Deputy Commissioner has asserted the existence of flat front faces of extrusions in the prior art. We think that that this is unworthy without referencing at least one example – not necessarily from the register and not necessarily manufactured by the Applicant whose name was withheld from the ruling.

Without images available, it is very difficult to truly appreciate the differences between the profiles, but the lack of a slot running along the visible surface does create a smooth frame lacking all distinguishing features so it seems reasonable to conclude that this is not new and cannot be registered. I tried to argue a case for registering a gabled beverage carton lacking the standard screw topped spout but featuring a score line along the roof and ridge for easier formation of a spout for pouring. I was unsuccessful, and it is comforting to see that other Attorneys are having similar difficulty registering variants of previous designs. However, Israel does not have a petty patent system. Arguably there is a need to prevent objects of manufacture being immediately copied by competitors such that customers cannot tell where their product originates.

There has recently been a sea change in the registerability of designs in Israel. The Ordinance is archaic and only requires absolute local novelty. Examination was more based on formalities and less on substance. However, what the Israel Design Examiners are now doing is to look for some sort of design step and not merely for absolute novelty.  In my opinion this places the bar for registerability too high. It should be possible to register unique items of manufacture that may be near variants of previously existing designs, combining different features known from different competing products. In many jurisdictions registration is just that; there is no substantive examination for novelty, but merely a comparison of the various views for internal consistency. That said, the current decision is in line with other recent rulings, both published ones and rejections I’ve had from Examiners based on the differences between the application and the prior art being insufficient to provide novelty and originality.

I have a few local clients that register designs in 10 or 12 jurisdictions and in my experience the leading jurisdictions generally do not seem to conduct substantive examination but rather a formalities based one for internal consistency, appropriate classification and so on. However, the standards are not consistent across jurisdictions. Dashed lines are treated differently, disclaiming is possible in some countries but not in others. Where an object folds, the folded and unfolded configurations are sometimes considered one design and sometimes two. In Israel, there is a circular that states that products having open and closed configurations should be shown closed and in one open position. I can see the value in standardization of registration, but some products cannot reasonably be described in only two configurations, or it is impossible to understand how it morphs from one form to another without intermediate views. I’ve found that the Israel Design Examiners slavishly follow such circulars whereas I think they should provide guidelines that can be ignored where the essence of the product requires more than two configurations to be shown.

Anyway, this ruling is significant, and correctly does away with profile protection by design, by showing cross-sections that include internal features that are not visible on the installed product, and features that are concealed when the extruded section is installed. Such design registration was well-established but was somewhat dodgy. It’s become more difficult.

By way of comparison, this link relates to a decision for window seals that illustrates the former practice of the Patent Office. Clearly, things have changed.


A Balanced Temporary Injunction Against Rami Levy

April 19, 2018

This case concerns ‘minute steaks’ supplied by Rami Levy – a supermarket chain in own-brand packaging that has some similarity to that of Baladi, a brand that had introduced the product to the frozen meat freezers in Israel. Baladi sued Rami Levy for passing off, copyright infringement and unjust enrichment and tried to obtain a temporary injunction against Rami Levy at what is the start of the Israel barbecue season.

steaks

This case concerns ‘minute steaks’ supplied by Rami Levy – a supermarket chain in own-brand packaging that has some similarity to that of Baladi, a brand that had introduced the product to the frozen meat freezers in Israel. Baladi sued Rami Levy for passing off, copyright infringement and unjust enrichment and tried to obtain a temporary injunction against Rami Levy at what is the start of the Israel barbecue season.

baladi minute steak

The claims of passing off and copyright infringement were considered unlikely to prevail and thus not grounds for a temporary injunction. However, Judge Avrahami saw fit to grant a temporary injunction on the grounds of unjust enrichment. Rather than have Rami Levy’s product removed from the shelves and repackaged which could result in the meat being lost, she ruled that a sticker in a contrasting colour should be attached to the packages indicating that Maadaniya was Rami Levy’s own brand. Rami Levy was also advised to work towards introducing a more different package. The parties were invited to try to settle their differences without the court having to hear the case in its

Baladi makes meat products including minute steak which are thinly sliced steak that can be roasted in a frying pan in one minute. Baladi claims to have designed the packaging that they use for minute steaks.

Rami Levi is a public company that runs supermarkets across Israel. The company stocks known brands and also sells popular products packaged for them under their own label.

Rami Levi sells Baladi products. It also sells minute steaks under their only  own label “Rami Levi’s Sycamore Marketing Delicatessen”. Rami Levi’s own label minute steaks are packaged by TBone Veal.

In a preliminary ruling, Baladi claimed that minute steaks were not sold in supermarkets until they launched this product in November 2017 with a massive and expensive sales campaign. From the launch until 19 March 2018, the product sold well due to the marketing campaign. On 19 March 2018, suddenly, without notice, Rami Levi forbade Baladi to replenish supplies and blocked the product, and instead supplied minute steaks under their own label.

baladi logo

Baladi claims that the own-label brand is packaged in a copycat package of that of their product, and that this was a calculated, organized action of Rami Levi in bad faith, to ride on Baladi’s advertising campaign and product launch, benefiting from their investment. Baladi’s campaign has drawn customers to want to purchase their product. The customers go to the meat refrigerators and find the infringing product that is a copy of their package and are misled into believing that they are purchasing Baladi’s product.

Baladi considers that the case is particularly serious since Rami Levi is a retailer that can block their product whilst offering the competing own-label product. This is particularly problematic since Rami Levi’s product launch was just before Pesach and close to Independence Day which is the start of the Israel barbecue season when sales go up significantly.

In light of the above, on 22 March 2018, Baladi sued for passing off, unfair trade practices, copyright infringement in the product package and unjust enrichment. They filed their case in the Tel Aviv and Jaffa District Court. Baladi requested a permanent injunction, compensation and production of sales data. For the purpose of assessing the court fees, Baladi assess the damages at 2,750,000 Shekels.

Baladi also requested a temporary injunction on Rami Levi to prevent them using the product sold under their private label or at least to prevent them selling the product in the packaging used at the time of filing, and to cease from blocking Baladi’s products, and to enable their products to be sold on an equal basis with other frozen meat products. The Request was supported by an affidavit from Ms Irene Feldman, the VCFO of Baladi, and was filed as an ex-partes action for immediate attention since any delay will cause irreparable damage.

El gaucho minute steak

In response, Yossi Sabato, the VCEO of Rami Levy submitted an Affidavit claiming that Baladi was acting in extreme bad faith by not telling the court that they were conducting a parallel action against El Gaucho which is a label of TBone Veal in the Central District Court as 4347-01-18. In that instance, they made similar accusations which were rejected. This action, in a different court, against a different label, was a type of forum shopping that was indicative of bad faith and should be sufficient for the case to be thrown out. This was simply an attempt to corner the market and to prevent competition. The Ex-partes actions in both the El Gaucho case and in the present instance are cynical exploitations of the legal system designed to get free publicity, and the plaintiff was suing for extreme damages without having first contacted the supermarket chain, which is itself inequitable behavior for which the case should be thrown out.

monopoly

With regards to the complaint itself, Rami Levy claims that Baladi is trying to obtain a monopoly on minute steaks, which is a term known in Israel and abroad and which they did not coin. Baladi also tried to obtain a trademark for this generic term. Minute steaks have been advertised in Israel in the past and are available in restaurants and from butchers, and even from supermarkets. Baladi has not been in the market long enough for minute steaks to be identified with them to the extent that they deserve a monopoly on the term (acquired distinctiveness), and a reputation that is protectable, and even Baladi does not claim to have rights to minute steaks but only to the sound of the name.

Rami Levy

Rami Levy claims that their product package is completely different from Baladi’s, including writing and visual elements, and there is no likelihood of confusion. Baladi advertises their product with their trade-name Baladi clearly written thereon and, in the absence of this term, there is no likelihood of confusion. Rami Levy’s private label HaMaadaniya (literally the delicatessen) is well-known to Rami Levy’s customers as a low price brand, and there is no likelihood of confusion.

“Rami Levy” is written clearly on the front and back of the packaging, and is a super brand that does not need to ride on the reputation of Baladi or anyone else. The difference in price also prevents confusion, and all Rami Levy’s own branded products are clearly sold as such in their stores, and there are loads of examples of private labels being sold alongside branded goods and the public are not misled in any way that they are purchasing something other than the own label.

boycott

As to the issue of marketing Baladi’s products in Rami Levy’s stores, Rami Levy contends that they are under no obligation by general law (in rem) or by contract (in personam) with Baladi, to purchase any of Baladi’s products, including their meat products. Baladi’s goods are available in other chains. At present, Rami Levy stores DO stock Baladi’s minute steaks but, in view of the high price that Baladi dictates for their product, Rami Levy is under no obligation to replenish stocks of something much more

In answer to Rami Levy’s response, Baladi reiterated that their issue is NOT the name ‘minute steak’, but the packaging and the product blocking. On 26 March 2018. a long hearing was held. There were many attempts to bring the parties into an understanding, and the affidavits were reviewed and the parties summarized their arguments. After the hearing the parties still refused to come to an understanding, and so there is no alternative but to reach a verdict in this instance.

Relevant Considerations Regarding Temporary Injunctions

Principles-Governing-Issuance-of-Temporary-Injunction

It is known that the party requesting a temporary injunction has to convince the Court, on the basis of apparently convincing evidence, that there is grounds for the complaint and the Court then has to balance the ease of implementing the different actions, i.e. the damage to the complainant if a temporary restriction order is not issued, vs. the damage to defendant if a temporary restriction order is issued but if it later transpires should not have been. The Court has to ascertain whether the temporary injunction was requested in good faith, and if the injunction is just and fitting in the circumstances and does not unduly damage the defendant – See Regulation 363 of the Civil Procedures Regulation 1984.

interests

The main considerations for requesting a temporary injunction are the likelihood of prevailing and the balance of interests of the two parties, but where the Court considers that the likelihood of prevailing is greater, they will be less concerned about the balance of interests, and the opposite is also true.

When deciding on a temporary injunction, the court also has Read the rest of this entry »


 Appeal Regarding Infanti Baby Seats Virtually identical to those of Fisher Price (Mattel)

September 19, 2017

fisher price swing seatBaby swing-seats that were made in China and are identical to Fisher Price swing seats, down to the image of a lion on the upholstery, were imported and sold in Israel under the brand Infanti. Fisher Price obtained an Anton Pillar injunction and seized 1830 seats from the Importers’ warehouse. However, the Nazareth District Court rejected all attempts to obtain compensation under copyright infringement of the lion design printed on the seat upholstery and in the instruction manual, trademark infringement for the Fisher Price logo shown in the illustrations of the instruction manual, the trade tort of Passing Off, and the catch-all Law Of Unjust Enrichment following A.Sh.I.R. The case was then referred to the High Court.

This ruling by a panel of Israel High Court judges considers whether copyright subsists for a product design or artwork printed on a product where no design was registered for the product and whether there are grounds for sanctions under the trade-law of Passing Off or under the Law of Unjust Enrichment. The legal advisor to the government filed an amicus brief clarifying the position of the government in such issues.

judge elyakim rubinstenThe main ruling was given by Vice President of the High Court, Judge Elyakim Rubinstein who first considered the basic relationship between design law and copyright. Then, he ruled whether part of something that could have been registered as a design is entitled to copyright protection, and if so, whether the lion character is copyright protected even if the swing chair could have been registered as a design. Are the respondents direct or indirect infringers of the Appellant’s copyright? Do they have the defense of being unaware? Does trademark infringement require intent? And finally is there Passing Off or Unjust Enrichment?

Essentially Judge Rubinstein and Fogelman found copyright infringement due to the lion character on the upholstery, and Judge Meltzer also found that there was passing off, due to the products being virtually identical. Judges Rubinstein and Fogelman rejected the claims of passing off since although Fisher Price clearly had a reputation, they did not necessarily have a reputation for the baby swing seat. Infanti’s copies, though virtually identical to those of Fisher Price, were packaged in different boxes and the boxes were clearly labelled Infanti. The product itself was also labeled with the Infanti brand.

The main ruling is given below, followed by additional comments by Judges Fogelman and Meltzer. Since this is an important ruling, I have translated it in full. At the end are some comments and criticisms.

Background

This is an appeal against ruling 39534-02-15 by Nazareth district Court judge, Ben Chamo which was given on 8 January 2015 and in which Fisher Price lost their claim regarding copyright infringement in a child’s swing seat.

The ruling addresses the relationship between copyright and registered design rights. Judge Rubinstein notes that in the modern consumer society, the design of consumer goods has an increasing importance, and that manufacturers invest heavily  Consequently, many goods are some combination of functionality and artistic expression which makes it difficult to classify such goods in a single IP category and raises difficult legal questions. This appeal relates to a list of such questions of which the relationship between design law and copyright is central.

The Appellant, Mattel Inc. is a US Company that owns Fisher Price which makes baby goods, etc. The Respondent, Dvaron Import-Export Co. Ltd, is a company that imports various baby products into Israel. They and their directors and share holders were sued.

infantiMattel / Fisher-Price learned through Sakal which imports their products into Israel, that the respondents have been distributing a baby swing seat manufactured in China and branded as Infanti, which is a copy of the Fisher-Price swing seat.  Read the rest of this entry »


Getting a Handle on Israel Design Registration

March 26, 2017

Furnipart

Although there is a proposed Law in the works, in Israel, design registration follows the somewhat archaic Patent and Design Ordinance 1924 inherited from the British Mandate. Formally, only local novelty is required! In a Circular, Previous Commissioner Dr Meir Noam creatively interpreted the Law such that Internet publication in official Patent Office websites that are acceptable in Israel would be considered as published in Israel. As discussed in this blog, that Circular is arguably ultra-vires in that such a determination arguably requires at least Ministry of Justice regulations if not a change in the Law. The present ruling by Outgoing Commissioner Kling relates to this Circular.

This ruling concerns seven design registrations – 55598 to 55604 – all of which were titled ‘Handle’ and were filed on 20 May 2014 in class 08-06 for handles and hinges by Furnipart.

On 22 March 2015, the Applicant received an Office Action that alleged that the design were lacking in the novelty and originality required by Section 30(1) of the Patent and Design Ordinance 1924 since the designs were identical to those registered in the name of the Applicant in Europe which were registered and published prior to submission of the Applications in Israel.

In addition to the 55602 registration that was submitted to the EPO on 18 October 2013 and which published on 15 November 2014, all the applications were submitted on 21 February 2014 and published on 26 March 2014.

The Applicant failed to respond to the Office Actions in the period specified in Regulation 28 of the Design Regulations, and on 23 June 2015, a reminder was sent warning the Applicant that failure to respond within 30 days with a request for a retroactive extension would lead to the applications being considered abandoned.

On 10 August 2015, the Applicant sent a response in which he claimed that the designs were, indeed registered in Europe, but apart from the publication on the EPO website, there was no publication in Israel. The Applicant claimed that the Israel Application was filed within the six month time frame of the European filings which is within the grace period from the first filing (Denmark) given in Section 52a(1) of the Ordinance.  Consequently, the European filing date should be considered the effective filing date in Israel.

On 13 August 2005, the Applicant was sent a notice that stated that further examination required payment of the extension fee, and which referenced Circular M.N. 69 from 25 December 2008 and to Section 53(2) of the Ordinance, noting that the Applications did not, claim priority.

On 9 September 2015, the Applicant was sent a second Office Action clarifying that under Circular M.N. 69, an Internet publication is considered as a publication that is published in Israel and so the Applications are contrary to Section 30(1) of the Ordinance. Similarly, it was noted that priority was not requested within two months of submission as required by Section 52(2) and so the effective filing date was the actual filing date in Israel.

On 15 December 2015 in light of the rejection of 9 September, the Applicant requested a hearing and this was geld on 18 April 2016.

Prior to the hearing, the Applicant submitted his main pleadings on 11 April 2016., during which he reiterated the above claims. He also alleged that Circular M.N. 69 differentiates between official and commercial publications and the European Patent Office publication was not meant to be published in Israel, even if it is accessible on line from Israel since the Israel design is not in force. Based on this ‘logic’, the Applicant claims that he is within the requirements of Section 52(a)1 of the Ordinance since there is a six month’s grace period.

 The Ruling

Section 30(1) of the Ordinance states:

The registrar may, on the application made in the prescribed form and manner of any person claiming to be the proprietor of any new or original design not previously published in Israel register the design under this Part.

So registration is contingent on no prior publication in Israel.

In Section 6 of Circular M.N. 69 from 24 December 2008, the previous Commissioner ruled that :

One can cite designs that have published on the Internet before the filing date in Israel, since there is evidence of their publication date.

To cite something against novelty of a design, section 7 of M.N. 69 relates explicitly to publications in patent offices abroad.

Use of Internet publications shall be done with the required care and only where the Examiner considers that he can rely on it indeed having published prior to the Israel filing date. For example, publication in databases in the official European patent office website OHIM, the USPTO and WIPO, etc. which publish the publication date of each design.

As far as relying on Internet publication, Examiners have been warned to cite these with due care – see the 51593 and 51594 Tequila Cuervo ruling from 9 June 2013, particularly paragraphs 44 and 45, and the ruling concerning various designs to Naot Shoes (1994) ltd published on 1 June 2016 

The same required care regarding the publication date, content and likelihood of Israel based surfers seeing the publication was considered in paragraph 10 of the 45452 Sejec Vanja ruling published on 28 February 2012: 

The language of Section 30(1) of the Ordinance states ‘… not having published earlier in Israel. This does not require that anyone has actually seen the publication…such was always the interpretation, even prior to the Internet age. The question is whether the publication was accessible. See for example the Appeal 430/67 Sharnoa ltd. et al. vs. Tnuva et al. (1968):

“The law regarding prior publication in a book of this type is based on the book being found in a place accessible to the public, such as a public library is considered sufficient publication, since one can assume that in this manner, the design reaches the public knowledge”.

In light of the above, one cannot accept the Applicant’s allegation that the previous publications are not novelty destroying, since reason that Patent Office Internet accessible databases are considered publications is the ease with which one can verify the publication date. This is certainly the case where the applicant does not deny the trustworthiness of the site and of the listed publication date, only whether Israelis would have access to inspect there.

Priority Date

The Applicant claims that despite the earlier publications that are novelty destroying for the applied for designs, the effective filing date in Israel should be considered as being the actual filing date in Europe.

Section 52(a) states:

If a design owner submits a request to register a design that has previously been filed by himself or by  his predecessors in title, a request to file in one or more friendly states (henceforth priority), he may request that as far as sections 30(a) and 36 are concerned, that the earliest priority date will be considered the filing date in Israel if all the following conditions are met:
(1) The Israel Application is submitted within six months of the earliest priority; and
(2) A priority request is submitted within two months of filing.

Firstly, it is stressed that contrary to the Applicant’s claims, Section 52 that the priority date is determined with reference to Sections 30(1) and 36, i.e. with respect to novelty and earlier publication. This does not mean that where a priority claim is made, that the Israel application automatically is awarded the priority date.

In this instance, the previous applications were filed on 21 February 2014 and then in Israel on 20 May 2014, i.e. within the six months grace period for which I priority request can be made. However, filing within six months of the prior application is insufficient since the second clause requires that the Applicant makes a priority claim within two months of the Israel filing date.

On 21 October 2014, this two month period for requesting priority in Israel passed, the period for which the application can rely on the filing date of earlier applications with respect to Sections 30(1) and 36 passed without Applicant requesting priority.

The Commissioner does not agree with the Applicant that the mere filing of an Application in the period provided for in clause 1 is sufficient since Section 52 requires both conditions to be fulfilled: filing within six months and making a timely request for recognition of the priority date. These conditions are complimentary – section 52(a) states explicitly that it applies if all the following conditions are met. One condition being fulfilled does not waive the other. So there is consensus that merely filing within six months does not result in priority being recognized.

Since the full requirements were only met a year after the two month deadline, the Applicant is not entitled to the priority date.

In the hearing, the Applicant’s representative noted that section 54 gives the Commissioner the discretionary powers to extend deadlines in the regulations even retroactively. The Commissioner considers that this regulation does not give him the power to extend deadlines in the Ordinance itself, including extending the priority claim.

The Application is rejected and the designs will not register.

Ruling concerning Design Numbers 55598 to 55604 “Handles” by Asa Kling, 21 February 2017.

COMMENT

four candles  The classic 1976 Fork Handles sketch may be found here.


Updated Blender Container May Be Registered as a Design

December 11, 2016

On 26 August 2014, HOMELAND HOUSEWARES, LLC submitted a design application to the Israel Patent Office for a blender container as shown below.

blender

Although the Design Ordinance 1924 only requires local novelty, previous Commissioner Dr Meir Noam interpreted this to include prior art on the internet that is accessible in Israel. In an Office Action of 1 July 2015, the Examiner found a picture of a blender on the Applicant’s website that appeared to preempt the registration and therefore refused the design. The Applicant responded on 23 August 2015 to the effect that the blender on the website was an earlier model. Although both had four vertical ribs, in the earlier model blender as shown on the website, these ribs were protrusions on the inside of the container, that served as baffles, preventing the contents from swirling around and aiding blending, whereas in the applied for design the vertical ribs were on the inside and outside. Noting that to remove the container required inverting it and therefore arguing that uses would grip the top (the base when inverted) and not the protruding ribs, these ribs were aesthetic, non-functional elements, and by virtue thereof, the design was registerable.

The Applicant submitted an affidavit that stated:

7. The presence of external ribs changes the overall appearance and impression of the vessel significantly. The cross-section of the ribs is triangular in shape and the vertex of the external ribs is pointing outside. As such, users can see four external ribs that are very sharp. In contrast, users can only see the base of the triangular ribs in the prior art because the internal ribs are pointing inward. …

8. The presence of the external ribs also creates lighting effects that improve the appearance of the vessel. The vessel is made of plastic so that it is partially reflective and partially translucent. …”

“9. The presence of external ribs is mainly for aesthetic reasons. While internal ribs promote communication and disintegration of food contents, the external ribs do not interact with the food content and do not have any effect on the blending and mixing quality of the blender. The external ribs do not significantly help users to open or close the vessel with the blade base. … when users want to open the vessel and remove the blade base, they have to invert the vessel otherwise the food contents will spill. Hence, users will apply force to the blade base to rotate the blade base off of the vessel.”

“10. … The field of mixing vessels is regarded as very crowded. Vessels that have internal ribs are very common. …
11. However, I am not aware of any prior art blender vessel that has ribs on the external surface. Since the field of mixing vessels is crowded, it is my opinion that having external ribs on the surface is a very significant alternation of the appearance of mixing vessels. …”

The Commissioner Asa Kling, reiterated that any original or new design could be registered in Israel, and the term design is includes outlines, shapes or decorations of industrial objects of manufacture that are readily visible to consumers who need not be experts but are not simply passers-by (sections 1 and 2 of the ordinance, and 1187/94 Sela vs Ackerstein LTD [8] 291. 

With reference to the 22424, 22433, 22783 and 23767 Klil ruling from 1997, in crowded fields, one does not analyze an object into its elements, but considers it as a whole, see also 31007 Thermo-gumi vs Agmon Plastics and Rubber Industry, 4 April 2011.

With regards to designs on the Internet accessible from Israel, these are prior art under the ordinance as interpreted, see Design 51593 and 51594 Tequila Cuervo S.A. DE. and the Teva Naot case, and further ruled that previous decisions that required care when considering Internet publications not in patent office databases, required care regarding the date of posting, but were prior art in all regards. He accepted the Applicant’s contention that the external ribs were an aesthetic and non-functional modification, and allowed the application, returning it to the design department for registration.

 


Bifurcation in the Interest of Efficiency

November 1, 2016

bifurcatedIn Germany, the courts that rule on patent infringement are not authorized to rule on validity. This makes Germany a preferred litigation jurisdiction for bringing European IP cases. Israeli courts can and do rule on validity of patents and designs in infringement cases. Usually having one court review everything is more efficient, however, this is not always the case.

52245Israel Design Application Number 52245 to My Bondi Ltd. was filed on 23 February 2012 and issued on 23 July 2014. The design is for a multipurpose holder as shown.

In May 2015, My Bondi sued Urban Cofix Ltd and Tabor Publicity Ltd in the Rishon le Zion Magistrates Court claiming infringement of the design. The case is 42290-05-16.

In response, Tabor Publicity Ltd filed a cancellation proceeding against the allegedly infringed design, claiming that it had published prior to the design registration application being filed.

My Bondi have asked for the cancellation proceeding to be stayed until the Rishon le Zion court rules on infringement. They claim that the court will consider additional claims including that of validity, so staying that proceeding will cause a miscarriage in justice.

Tabor Publicity Ltd object to staying the cancellation proceeding. They claim to have already asked the court to stay the infringement ruling until the patent office determines validity of the design registration. They note that in the statement of defence submitted to the court they noted that they would be challenging the validity of the design registration and that the magistrate’s court lacked juridical competence to rule on validity issues. They do not consider that having the Israel Patent Office consider validity will result in a miscarriage of justice since the validity of the allegedly infringed design is a preliminary issue that should be dealt with first.

In the meantime, on 16 August 2015, the Rishon le Zion magistrate’s court transferred the case to the Central District Court as the correct court for ruling on design infringement, but this happened without considering the staying request.

RULING

The bone of contention in the proceeding before the Commissioner of Patents, Designs and Trademarks relates to advertising the product on the Facebook page of the Applicant prior to the registration application being filed. The alleged infringer claims that this advertisement shows the point of novelty thereby destroying the novelty at the time of filing which is a necessary condition for registration.

From their Counter Statement requesting suspension pending the court ruling, the design owner does not deny the publication but claims that the publication was a genuine mistake.

The purpose of suspending a proceeding is “to prevent overly burdening the opposing party and to prevent unnecessary problems for the courts”. See Appeal 8/78 El Okvi vs. Israel Lands Authority, p.d. 29 (2) 477. 483.

In this instance the parties agree that the question of the validity of the mark in the light of the prior publication is the legal issue common to the two proceedings. Clearly the District Court has additional issues to consider, such as unjust enrichment and passing off, etc. which are beyond the legal competence of the Commissioner of Patents to address.

The range of issues before the District Court is wide, and will take longer than merely ruling on the validity of the design registration. The second defendant is a registered third-party to the validity issue. However, the issue before the Patent Office is a focussed one that relates only to the validity issue in light of prior art that all parties acknowledge the publication of.

The main case was transferred to the District Court which has not considered the case at all. Furthermore, in their statement for the defence, Tabor Publicity raised the validity issue and noted that it would approach the Patent Office for a ruling on that issue. Consequently, the Deputy Commissioner rules that it is more efficient for him to rule on the validity issue as per the 1925 Design Regulations which gives the Requester for Cancellation a number of weeks to provide evidence and the design owner a further month.

In conclusion, the cancellation request is allowed to continue and the parties are forewarned that attempts to extend the proceedings before the Patent Office will be considered in light of the progress of the case before the District Court to prevent unnecessary delays.

Cancellation Request Re Israel Design No. 52245 Interim Ruling by Ms Jacqueline Bracha, 11 September 2016

COMMENT

Design litigation does indeed go directly to the District Court, and is appealed to the Supreme Court. The patent office has vastly more experience than any District Court judge in ruling on whether internet publications are prior art. Whether the publication was intentional or not is irrelevant.

 

 

 


Israel Patent Office Rules Costs for ‘Unnecessary’ Design Cancellation Proceeding

September 11, 2016

costs-awardThere are very few Israel Patent Office rulings or Israel court rulings relating to designs. However, they do occur.

Israel Design No. 53151 to SHL Alubin ltd relates to a profile. It was submitted for registration on 6 September 2012, and issued on 19 December 2013. On 31 December 2015, it was canceled following a Court Order obtained by Silver Hong Kong Israel, who then requested real and actual costs to be awarded.

Silver Hong Kong Israel filed for cancellation on 10 August 2014. SHL Alubin ltd denied all charges. In parallel to the cancellation procedure, a complaint was filed with the Haifa District Court – Civil Matter 21470-03-14 SHL Alubin LTD vs. Exstel LTD.  Before the Israel Patent Office could hear the case, the District Court issued a ruling on 29 December 2015, canceling the mark.

To complete the picture, the design owner SHL Alubin LTD filed a request to hold the court’s ruling, but on 27 January 2015, that request was rejected and the design cancellation was published in the Israel Patent Office journal.

At that stage, a request for costs was filed, for the work done until that time, including filing statements of case, submitting evidence and counter-evidence. To support the request for costs, the Applicant submitted an affidavit from the CEO of Silver Hong Kong Israel ltd., with receipts for official fees and a breakdown of hours per month spent on the project. The breakdown was created for this request for costs, but was not detailed.

Silver Hong Kong Israel ltd. rather oddly claimed to have invoices that they were not submitting for secrecy reasons unless asked to.  On 10 May 2016, Applicant submitted invoices together with a statement from the CEO. The invoices were for consultation from the agent of record for each stage of the proceedings and totaled $35,567.5 (approx. 140,670 Shekels) for 42.5 hours of senior attorney time and 187.5 hours of junior attorney time, and a further 832 Shekels for official fees and 1500 Shekels for incidental expenses, not previously claimed.

Silver Hong Kong Israel ltd. considered the costs appropriate for the stage reached. They claimed that the court filing was forced on them as Alubin threatened to sue them for registered design infringement. However, since Alubin’s claims and designs were indefensible, their behaviour should be sanctioned, and this should be reflected in the costs ruled.

Silver Hong Kong Israel claimed that Alubin had hidden the functional nature of their design when filing the application, and this was what resulted in the design eventually being canceled. Silver Hong Kong Israel further alleged that Alubin hid the court proceedings from them and made it difficult for them to obtain details of the proceedings before the courts.

Alubin countered that the invoices were made out to a different company, VeMetal ltd., and there was no indication of a connection between that company and the plaintiff here.

There are very few Israel Patent Office rulings or Israel court rulings relating to designs. However, they do occur.

Israel Design No. 53151 to SHL Alubin ltd relates to a profile. It was submitted for registration on 6 September 2012, and issued on 19 December 2013. On 31 December 2015, it was canceled following a Court Order obtained by Silver Hong Kong Israel, who then requested real and actual costs to be awarded.

Silver Hong Kong Israel filed for cancellation on 10 August 2014. SHL Alubin ltd denied all charges. In parallel to the cancellation procedure, a complaint was filed with the Haifa District Court – Civil Matter 21470-03-14 SHL Alubin LTD vs. Exstel LTD.  Before the Israel Patent Office could hear the case, the District Court issued a ruling on 29 December 2015, canceling the mark.

To complete the picture, the design owner SHL Alubin LTD filed a request to hold the court’s ruling, but on 27 January 2015, that request was rejected and the design cancellation was published in the Israel Patent Office journal.

At that stage, a request for costs was filed, for the work done until that time, including filing statements of case, submitting evidence and counter-evidence. To support the request for costs, the Applicant submitted an affidavit from the CEO of Silver Hong Kong Israel ltd., with receipts for official fees and a breakdown of hours per month spent on the project. The breakdown was created for this request for costs, but was not detailed.

Silver Hong Kong Israel ltd. rather oddly claimed to have invoices that they were not submitting for secrecy reasons unless asked to.  On 10 May 2016, Applicant submitted invoices together with a statement from the CEO. The invoices were for consultation from the agent of record for each stage of the proceedings and totaled $35,567.5 (approx. 140,670 Shekels) for 42.5 hours of senior attorney time and 187.5 hours of junior attorney time, and a further 832 Shekels for official fees and 1500 Shekels for incidental expenses, not previously claimed.

Silver Hong Kong Israel ltd. considered the costs appropriate for the stage reached. They claimed that the court filing was forced on them as Alubin threatened to sue them for registered design infringement. However, since Alubin’s claims and designs were indefensible, their behaviour should be sanctioned, and this should be reflected in the costs ruled.

Silver Hong Kong Israel claimed that Alubin had hidden the functional nature of their design when filing the application, and this was what resulted in the design eventually being canceled.

Alubin countered that Silver Hong Kong Israel based their case on the District Court case that they were not a party to. Silver Hong Kong Israel were granted access by the judge and this enabled them to file and prosecute the cancellation proceedings with minimal additional work.  Since the case never went to a hearing, this should be reflected in the costs awarded.  The cost request was a random list of hours and persons without details of the work allegedly done on behalf of Silver Hong Kong Israel, and the total amount of hours claimed was grossly inflated.  The invoices were made out in the name of V Metal ltd., not Silver Hong Kong Israel, and there was no link between the invoices and the work done.

Silver Hong Kong Israel countered this by explaining that V Metal ltd. was a sister company with common owners.

Commissioner Asa Kling noted that Section 46 of the Patent & Design Ordinance 1926 provides that:

In any legal proceeding before the Commissioner under this Ordinance, the Commissioner may rule what he considers to be reasonable costs, can decide which party should pay the costs and how they should be paid.

 [MF – there is an Israel Design Law pending legislation, but until it enters into force, design law is covered by this rather archaic ordinance].

The case-law establishes that the losing party should pay real costs. However, the courts can decide if the actual costs were reasonable, proportional and necessarily incurred in fighting the case, in the specific circumstances. The costs must be proportional to the issue being considered, so that the successful litigant recovers his costs but doesn’t punish the loser. See Bagatz 891/05 Tnuva Cooperative for Marketing Israel Produce vs. the Body Authorized to Grant Import Licenses of the Ministry of Trade & industry, 30 June 2005 paragraph 19.  The various considerations have been weighed up in a long list of patent and trademark rulings by the Israel Patent Office, and are appropriate for design litigation as well.

 

To be awarded real and actual costs, the successful litigator must show that the proof, a breakdown of hours and an agreement for compensating counsel.  Once the successful party provides a detailed costs analysis, the onus is on the losing party to pick holes in the costs request. This is stated in Paragraph 225 of the Tnuva ruling:

Once the detailed request for costs is substantiated – the burden of proof switches and the onus is on the loser to show why the costs are exorbitant, based on their being unreasonable, unnecessary and / or disproportional. 

The claim that Silver Hong Kong Israel could have based their case on the District Court filings was a general allegation and was substantiated in any way. Examination of the submissions to the Israel Patent Office dies imply that a significant amount of real work was performed on behalf of Silver Hong Kong Israel.  The case before the Israel Patent Office has a different statement of case, and evidence to support that statement of case. The court proceeding is not a substitute that can be cut & pasted.  Alubin claims that the costs incurred were unnecessary but there are no concrete examples and the company does not back this claim with evidence.

Alubin considers the whole submission was unnecessary since the case was never heard by the Israel Patent Office. Commisioner Kling rejects this position as  something that Silver Hong Kong Israel could not have predicted and the fact that the case before the Israel Patent Office was never ruled on its merits does not render the filing of the case frivolous or unnecessary.

In light of the above analysis, Silver Hong Kong Israel are entitled to real costs. However, Silver Hong Kong Israel did not originally submit details of the actual costs incurred. There is a difference between the identity of the party to the cancellation proceeding and the entity to which invoices were issued and due to the invoices not being submitted in a timely manner, this was not fully explained. This and the fact that the original request for costs was not detailed, can fairly be taken into account in a costs ruling under Regulation 512b of the Civil Regulations 1984, which allows the courts to consider the parties’ behaviour.

 Taking the above into account, costs of 832 Shekels and legal fees of 80,000 Shekels are awarded to Silver Hong Kong Israel , to be paid within 30 days or the sum will be index linked and interest will be incurred.

Costs re cancellation proceeding for Israel Design No. 53151, Ruling by Asa Kling, 3 August 2016.