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.


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.


Online Design Filing in Israel

December 22, 2016

ilpo

The Israel Patent Office held a seminar today to introduce their new online design submission interface. Over the past five years the Israel Patent Office has gradually introduced online trademark, PCT and patent filing and prosecution and has published guidelines for examiners, which help applicants and their representatives.

The Design Department is the last department to become fully computerized, and, if all goes well, the interface will become ‘live’ on 29 December 2016.

alferd_teeThere were some 50 participants at the seminar. These included veteran Patent Attorney and Rabbi, Alfred Thee, known generally as Mr T, who, though rather less muscular and black than the character from the A Team, is, nevertheless, a very sprightly and highly experienced 85 year-old practitioner that I had the benefit of training and qualifying under. Mr T told me that he was finally leaving his long-term employment at Seligsohn & Gabrieli at the end of the year, but would carry on working as a self-employed consultant. I anticipate retiring before he does!

In addition to various friends, colleagues and competitors, I noted the presence of Zvi Teff who qualified under my tutelage, and who has recently opened his own firm. We wish him luck with this endeavour.

aippiThe seminar ran from 11:00 AM to 1:00 PM. Those that could be bothered rushed over to Tel Aviv for a General Meeting of the AIPPI that started at 2:30 PM. Holding the two events on the same day seemed to be both rather silly and also discriminatory against those practitioners that file design applications.  Had the AIPPI held their event at the Israel Patent Office at 2:30, many more people would have attended both events. There are only a few hundred IP practitioners in Israel, including lawyers, examiners and patent attorneys, that could join the Israel Branch of the AIPPI. Doing a General Meeting on the same day as an IP seminar at the Patent Office is like holding a general meeting during INTA. It is plain stupid.

Commissioner Kling opened the event and spoke about the pending Israel Design Law which is due to replace the hopelessly outdated Design Ordinance from 1922 that is currently in force. Amongst other ramifications of the pending legislation, it will pave the way for Israel to join the Hague International trademark registration system.

After the Commissioner finished, the Head of the Design Department, Alice Mahlis-Abramovich took the podium. However, the actual instruction on the new interface was given by someone from a software instruction agency who bore a slight resemblance to Israeli singer Roni Dalumi. Having someone who was used to explaining how to use software explaining how to use the software was a strategy with mixed results. Since she didn’t practice design law, she could relate to what the software did, but not how to do various things that practitioners might want it to do. Also, she referred to something submitted as being a design, whereas practitioners would call these design applications, and only refer to the examined and registered product as a ‘design.’

Those now familiar with filing and prosecuting patent applications via the online interface will experience little difficulty using design interface. The seminar wasn’t very exciting, but some of the questions were rather interesting. Apparently one of my colleagues submits patent applications, listing a-company-in-the-process-of-being-set-up as the applicant to avoid a tax incident occurring. That as may be, a not yet formed company is not a real person or a legal person (entity). If the company is not formed or if the name changes, who can assign rights to the application? How can one obtain a date without an applicant that actually exists?


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.

 


Israel Patent Office Denies Authority to Reinstate a Lapsed Design After Grace Period, Despite Proof of Timely Payment

March 9, 2016

Pigeon post

Gabi Bakshi has two registered designs that have lapsed. Design Number IL 40188 is for a dove shaped sculpture. It was registered in January 2005 and renewed in November 2009. It then lapsed because the second renewal wasn’t timely paid. The six month grace period ended on 17 July 2015. Gabi Bakshi also registered Israel Design No. 48297 which is for a variant of 40188. This variant was filed in September 2009 and registered in November 2009. It should have been renewed on 17 January 2010 together with the 40188 design since, as a variant design it was not entitled to longer protection than the parent.

On 28 December 2015, Mr Bakshi requested reinstatement of both designs. He claimed to have paid the renewals on 16 November 2014 and to have posted the renewal receipts for the second renewal to the Israel Patent and Trademark Office by registered mail but it was never received and so the design lapsed.  The appended receipt shows that  the 40188 design was renewed but there is no evidence that the 48297 variant was renewed. At a hearing, Mr Bakshi renounced the 48297 variant but alleged that he believed that the 40188 design was renewed in a timely manner.

Ruling

Section 33(4) of the Design Ordinance requires requesting an extension within five years and the regulations grant a six month grace period. Citing 30704 and 3705 Moshe Harel and 560/92 Klil Industries, the Deputy Commissioner, Ms Jacqueline Bracha considers that unlike lapsed patents, the Commissioner does not have the authority to reinstate a lapsed design after the six months grace period has passed.  In this instance, the fact that the Design registrant had paid the renewal fee and sent it to the patent office does not help as it was not received.

Based on the decision concerning design numbers 35866 and 35867 to Eli Yashar, where a request for extensions is made, the Commissioner can extend the period of a design if two conditions are fulfilled. One has to both timely request an extension and to pay the fee.  Without requesting an extension, paying the fee is not enough.

Consequently the request for renewal was not granted. Mr Bakshi may appeal the decision to the District Court which can, if it sees fit, order the extension to be entered into the register.

COMMENT

I suspect that Mr Bakshi may be entitled to copyright protection and to protection under the Law of Unjust Enrichment as per the A.Sh.I.R. decision, but haven’t seen the designs.

I wonder if Pigeon Post might have been more reliable than registered mail?


Can the Commissioner of Patents Suspend Implementation of a Court Ruling Voiding a Design that is Subject to Appeal?

February 8, 2016

Design Registration

On 29 December 2014, in Civil Dispute No. 21740-03-11, the Haifa District Court ruled that design registration Number 53151 to S.H.L. Alubin be struck from the design register.
The design relates to a profile. S.H.L. Alubin have requested that this order be suspended pending appeal. Silver Hong-Kong Israel LTD and Extel LTD oppose the suspension.

S.H.L. Alubin argues that the ruling by the Haifa district court is not final in that he can appeal against it and intends to do so. Since the ruling could be overturned, it makes more sense to stay the ruling than to cancel the design and possibly reinstate.

Silver Hong-Kong Israel LTD who requested the cancellation on the basis of the court ruling, considers that there is no basis to stay the decision as there is a court ruling from 31 December 2015 that the design is void, and the Commissioner cannot maintain a voided mark pending any future development. The jurisdiction appropriate for suspending a cancellation ruling pending appeal is the District Court that issued the ruling. The request to suspend the decision was further defective as it neither detailed the expected damages from carrying out the ruling nor included a personal obligation from S.H.L. Alubin.

Extel LTD who won the case in the District Court concurs with Silver Hong-Kong Israel LTD that the forum responsible for granting a suspension is the Haifa District Court, and the Commissioner does not have the jurisdictional authority to relate to the request.

RULING
There is nothing in the Design Ordinance or the 1925 regulations that relates to suspending a cancellation of a design pending appeal. However, with the nature of rulings before the Commissioner it is doubtful that suspending such a ruling is beyond his Authority. In the cancellation proceedings regarding IL 157925 Moshe Lavie et al. vs Tzach Maoz Mazganim LTD (21 June 2015) and in numerous trademark rulings, the cancellation of the patent / trademark was suspended pending appeal, including after such an appeal was filed or notice of filing of the appeal was received. The Commissioner cannot see justification for design cancellations to be any different. Consequently, the Commissioner can simply draw a comparison form similar patent and trademark rulings.

As a general rule, however, Section 466 of the Rules for Civil Procedure, filing an appeal does not stop a decision being carried out. Section 467 gives the court authority to suspend a decision subject to appeal or to effect any other temporary arrangement as it seems fit. However both sections are applicable to the court that issues the ruling – See Zusman on civil procedure, page 862.

In this instance, the Haifa Court vacated the mark and the Commissioner as head of the Design Department of the Israel Patent Office is being asked to suspend this decision. It is not clear that the Commissioner has authority in such instances, and even if he had, Section 466 would imply that he should not stop such as action.

Suspension of a ruling is justified where the applicant has a reasonable likelihood of prevailing in an appeal and that the damage caused by suspending is estimated to be less than that of implementing the decision and then having to restore the design following successful appeal. See the Supreme Court Ruling 3158/91 concerning Flatto Sharon.
Thus it is for the Commissioner to decide if and to what extent reversing an action will be problematic.

Although he has claimed that implementation won’t harm third parties and that not suspending will cause problems, Alubin has failed to make a reasonable case that implementation of the ruling should be suspended. Section 466 states that the general state of affairs is that rulings should be implemented and the onus is on the design owner to provide convincing arguments to justify acting differently.

Alubin’s argument that if the appeal is successful he would have to refile his design is not the case. The Commissioner can simply restore the design registration as being in force.  Damage may be compensated for by court ordered costs. Irreversible damage needs to be shown not merely claimed.

In conclusion, request for suspending the cancellation is refused and the cancellation of design number 53151 will publish in the next design journal.

Ruling by Asa Kling, Concerning Cancellation of Design 53151, 27 January 2016.


Registering Designs for Garments

February 9, 2015
Fashion is an industry where the innovator benefits from a lead time as first mover, but most manufacturers follow trends and though designs may be registered, usually they are not. Copyright may protect exact copying, but generally this is also not an appropriate tool.
Recently, the international fashion brand Diesel, represented by Adv. Daniel Freimann, managed to obtain an injunction against Israeli clothing retailers Hoodies for copying a design of jeans.
Diesel's jeans are shown here:

 diesel from front  diesel from back

Hoodies jeans are shown here:

hoodies from front   hoodies from back

Diesel’s design has a high waist, are form hugging and have stitching extending from the bottom of the pockets, at the knees and at the back of the legs.  

This stitching detail is somewhat unique. Hoodies claimed that their jeans were not a copy, and were considerable cheaper and noted that the decorative stitching on the back pocket was somewhat different. They also argued that the Diesel’s design was for blue and white jeans only. The judge accepted that the back pocket stitiching was different, however, since Hoodies’ jeans had the same basic shape and included such stitching. 

Diesel had filed design applications (nos. 50526 and 51929 and claimed 11 and 9 novel features respectively. Hoodies argued that their jeans did not have all the elements. The judge considered that the issue is one of the impression of the garment as a whole and not one of analyzing novel features against a checklist. 

Hoodies accepted that Diesel had a reputation, but not one for the specific design. Since their jeans were sold at about 15% of Diesel’s prices and since the design was not well known, there was no case of passing off or likely consumer confusion. 

As to the registered design, Hoodies claimed that prior to it being filed, the jeans were on sale, so the design registration was void.

Judge Yaakov Shepser of the Central District Court noted that despite the differences, Hoodies had produced no evidence that there were other jeans on the market that were in this style, and that Hoodies’ jeans included at least 4 or the 9 new design elements. The judge also considered that there was a likelihood of consumer confusion. The Judge therefore ruled an injunction against Hoodies.

Hoodies claimed that as a basic Israeli clothing company, they were ‘honoured’ that Diesel had taken note of them.

 COMMENT

If Hoodies can show that the registered designs are void due to publication prior to filing, or at least that the stitching on knees, front pocket and back of trouser leg was used in Diesel or other jeans prior to the design registration, I think they should prevail.

If, however, there are valid design registrations for these features, I think the judge is correct that combining them with different decorative pocket stitches should still be considered infringing