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Article | ||
Chapter 1: Chapter 2: | Purpose of the Law ....................................................... Copyright Amendment of Copyright Ordinance ........... Amendment of Copyright Act....................................... Designs Amendment of Patents and Designs Ordinance ............ Amendment of Patents Law .......................................... | 1 2 3 4 5 |
Chapter 4: | Trade Marks Amendment to Trade Marks Ordinance ........................ | 6 |
Chapter 5: | Appellations of Origin Amendment to Appellations of Origin (Protection) Law ...............................................................................Amendment of Merchandise Marks Ordinance............. Amendment of Performers and Broadcasters Rights Law ............................................................................... | 7 8 9 |
Chapter 7: Chapter 8: | Prohibited Imports and Exports.....................................Commencement, Application and Transitional Provisions Commencement ............................................................Application and Transitional Provisions ....................... | 10 11 12 |
Purpose of the Law
1. The purpose of this Law is to amend intellectual property laws to conform with the requirements of the World Trade Organization Agreement relating to aspects of intellectual property rights (Agreement on Trade-Related Aspects of Intellectual Property Rights Including Trade in Counterfeit Goods—(TRIPS)) (hereinafter: “TRIPS”).
Chapter 1
Amendment of Copyright Ordinance
2. In the Copyright Ordinance1—
(1) Section 2—repealed;
(2) In section 2A, the words “in this Ordinance, “computer programs”—whether in source or object code” shall be inserted at the end;
(3) After section 3F, the following shall be inserted:
“Rental of Computer Software
3F1. The rental of computer programs for commercial purposes shall be copyright within the meaning of such term in the Copyright Act 19112 except where the computer program itself is not the essential object of the rental.”;
(4) The following shall be inserted after section 7A:
“Subjects not Protected
7B. Notwithstanding the provisions of section 1 of the Copyright Act 1911, no copyright shall subsist in any of the following:
however, copyright shall subsist in the manner in which these are expressed.
Destruction of Goods
7C. Without derogation from the provisions of section 7 of the Copyright Act 1911, the court may, at the end of the hearing of a claim, order the destruction of goods produced in infringement of copyright or used to perform such an infringement; a party filing an application for the destruction of goods under this section shall advise the Israel Police Department of such in the manner to be prescribed in the regulations, and the court shall not deal with the application without providing an opportunity to the police to make claims.
Grant of Notice to Director of Customs
7D.—(a) The holder of copyright in a work whose copyright has been infringed, or where there is a reasonable suspicion that it will be infringed, may give notice in writing to the Director of Customs to the effect that he is the holder of copyright in the work, and requesting the Director to delay releasing the goods that he claims are infringing copies of the work and to treat them as goods the import of which is prohibited under the Customs Ordinance3.
(b) A notice under sub-section (a) shall include one of the following:
Amendment of Copyright Act
3. Section 14 of the Copyright Act 1911 shall no longer apply in Israel.
Amendment of Patents and Designs Ordinance
4. In the Patents and Designs Ordinance4—
(1) The following shall be inserted at the end of section 2:
““World Trade Organization”—the World Trade Organization constituted by the agreement signed in Marrakech on 15 April 1994*;
“Member state”—a state that is party to the Paris Treaty or a member of the World Trade Organization;
“Paris Treaty”—the Treaty relating to Industrial Property Protection signed in Paris in 18835, as amended, to the extent that Israel is bound by such;**”
(2) The following shall be inserted at the end of section 33:
“(4) Despite the provisions of sub-sections (2) and (3), where the proprietor of a design has not requested an extension of the period of copyright and has not paid the fee on the date set out as aforesaid in sub-sections (2) or (3), such person may, during a period of six months commencing at the end of the first or second period of five years, as the case may be, request an extension of the period of copyright, subject to the payment of a fee in addition to the fee set out under these sub-sections.”;
(3) The following shall replace section 52:
“Priority
52.—(a) Where the proprietor of a design files an application for registration of a design for a design in respect of which such person or a person preceding him in ownership has already filed an application for registration in one or more member states (hereinafter: the “prior application”) and the prior application was filed on behalf of a citizen or resident of the said state, the proprietor may demand that for the purposes of sections 30(f) and 36, the date of the first prior application shall be the date of the application filed in Israel (hereinafter: “priority”), if all of the following have been fulfilled:
Amendment of Patents Law
5. In the Patents Law 5727—19676—
““World Trade Organization”—the World Trade Organization constituted by the agreement signed in Marrakech on 15 April 1994***;”;
(b) the following shall be inserted after the definition of “union State”:
““Member state”—a state that is party to the Paris Treaty or a member of the World Trade Organization;”;
(4) In section 50, the following shall replace sub-section (b):
“(b) With regard to an invention which is a process for manufacturing a product, in a claim for infringement, the defendant must prove that the process in which use was made to manufacture an identical product was different from that protected by the patent; for the purposes of this sub-section, an identical product manufactured without the consent of the proprietor of the patent will be considered as a product manufactured using the process protected by the patent, unless proven otherwise, if the following two elements exist:
(c) the following shall be inserted after sub-section (c):
“(d) a license granted to the proprietor of a later invention under the provisions of subsection (a) shall not be assignable unless the rights in the later invention are assigned together with the license.”;
(9) in section 122—
(10) the following shall replace section 123:
“Restriction of Scope of Compulsory License
123. A license under this Chapter shall be granted primarily for the supply of the local market.”;
(11) in section 126—
(12) the following shall be inserted after section 126:
“Transfer of Compulsory License
126A. A license awarded under this Chapter may not be transferred unless that part of the business or goodwill connected with use of the patent is transferred together with the license.”.
Amendment to Trade Marks Ordinance
6. In the Trade Marks Ordinance [New Version], 5732—19727—
“Well-known trade mark”—a mark that is well known in Israel as a mark owned by a person that is a citizen of a member state, a permanent resident of such state or who has an active industrial or commercial business in such state, even if the mark is not a trade mark registered in Israel or if there are no users of the mark in Israel; for the purposes of determining whether a trade mark is a well-known trade mark in Israel, the extent to which the mark is known in public circles relating to it and the extent to which it is known as a result of marketing, shall be taken into account, inter alia.”;
(b) the following shall be inserted at the end of the definition of “infringement”:
“(3) of a well-known trade mark even if it is not a registered trade mark, or of a mark so similar to it as to be misleading in respect of goods for which the mark is well known or in respect of goods of the same description;
(4) of a well-known trade mark which is registered, or a mark similar thereto, in respect of goods not of the same description, provided that such use could indicate a connection between such goods and the proprietor of the registered trade mark and the proprietor of the registered trade mark might be harmed as a result of such use.”;
(c) the following shall be inserted at the end of section 1:
““World Trade Organization”—the World Trade Organization constituted by the agreement signed in Marrakech on 15 April 1994****;”;
““Member state”—a state that is party to the Paris Treaty or a member of the World Trade Organization;”;
““Geographical indication”—means an indication that identifies in Israel goods as originating in a given geographical area of a member state, or region or part thereof, where a given quality, characteristic or reputation of the good is essentially attributable to its geographical origin;”;
“(6A) a mark containing a geographical indication in respect of goods originating in the geographical area indicated, if the geographical indication may be misleading as to the real geographical area in which the goods originated;
(6B) a mark containing a geographical indication that is literally correct, however that contains a false representation to the effect that the goods originated in a different geographical area;”;
(b) the following shall be inserted after paragraph (11):
“(12) a mark identifying wine or spirit beverages that contains a geographical indication, if such wine or spirit beverage did not originate in that geographical area;
(3) in section 16(a), the following shall replace paragraph (2):
“(2) the mark is devoid of any distinctive character; a trade mark shall not be disqualified from registration if it is different from the trade mark registered in its country of origin in a manner that does not alter its distinctiveness, and does not adversely affect its identity in the form in which it has been registered in the said country of origin;”;
(4) in section 24, the following shall be inserted after sub-section (a):
“(a1) the following are causes for opposition to the registration of a mark:
(1) there is a reason for which the registrar may, under the provisions of this Ordinance, refuse the application for registration;
“(al) Notwithstanding the provisions of sub-section (a), an application for removal of a trade mark on the grounds that the application for registration of the mark was filed in bad faith may be filed at any time.”;
(6) In section 41—
(a) in sub-section (a), the words “during the three years” shall be inserted in place of the words “during the two years”;
(b) the following shall be inserted after sub-section (e):
“(f) in this section, “use” of a trade mark shall include—
(7) The following shall be inserted after section 46:
“Exclusive Use of a Well-Known Trade Mark
46A.—(a) The proprietor of a well-known trade mark, even if it is not a registered trade mark, shall be entitled to exclusive use of the mark in respect of the goods for which it is well-known in Israel or in respect of goods of the same description.
(b) The proprietor of a well known trade mark that is a registered trade mark shall also be entitled to the exclusive use of that mark in respect of goods which are not of the same description if use of that mark by a person other than the proprietor would be likely to indicate a connection between the said goods and the registered proprietor of the mark, and the registered proprietor of the mark is likely to be damaged by such.
Protection of Trade Marks Used in Exhibitions
46B. A mark that is not a registered trade mark shall be considered, for the purposes of goods shown at an official or officially recognized international exhibition held in Israel, as a registered mark for the duration of the term in which the exhibition is held.”;
(10) The following shall be inserted after section 52:
“Continued Use of a Trade Mark
52A. Notwithstanding the provisions of this Ordinance, where an application for registration of a trade mark is filed, or where a trade mark has been registered in good faith, or where rights to a trade mark have been acquired through use of it in good faith, neither the eligibility of the mark for registration, the validity of registration, nor the right to use such trade mark, shall not be prejudiced for the sole reason that the trade mark is identical or similar to a geographical indication or to a well-known trade mark, provided that the application for registration of the trade mark, the registration or the acquisition as aforesaid were effected prior to—
(b) the following shall be inserted after sub-section (a):
“(b) for the purposes of an infringement relating to a well-known trade mark that is not a registered trade mark, the plaintiff shall be entitled to relief by way of injunction only.”;
(14) the following shall be inserted after section 59:
“Additional Remedies
59A.—(a) The court may order, at the end of hearing the claim, one of the following:
(3) on the doing of any other thing in respect of the goods.
However, the court shall not allow the defendant to possess the goods, even if the defendant has removed the infringing marks, except in extraordinary cases***** ;
(b) A party that files an application for the destruction of goods under this section shall notify the Israel Police Force of such in the manner prescribed in the regulations, and the court shall not hear such an application without giving the Police an opportunity to make claims.”;
(15) The following shall be inserted after section 69:
“Grant of Notice to Customs Director
69A.—(a) The proprietor of a registered trade mark whose rights have been infringed, or where there is a reasonable suspicion that they will be infringed, may give notice in writing to the Customs Director to the effect that he is the proprietor of the trade mark, and requesting the Director to delay releasing the goods that he claims are infringing goods and to treat them as goods the import of which is prohibited under the Customs Ordinance.
(b) A notice under sub-section (a) shall include one of the following:
Amendment to Appellations of Origin (Protection) Law
7. In the Appellations of Origin (Protection) Law 5725—1965—
(1) In the title of the law, the words “and Geographical Indications” shall be inserted after the words “Appellations of Origin”;
(2) In section 1, the following shall be inserted at the end of the section:
““Geographical indication”—means an indication that identifies in Israel goods as originating in a given geographical area of a member state, or a region or part thereof, where a given quality, characteristic or reputation of the good is essentially attributable to its geographical origin;
““Member state”—a state that is a member of the World Trade Organization;
““World Trade Organization”—the World Trade Organization constituted by the agreement signed in Marrakech on 15 April 1994.”;
(4) The following shall be inserted after section 21:
“Chapter 3.1 Geographical Indication
Unlawful Use of a Geographical Indication
21A. Use of a geographical indication in respect of a product the origin of which is other than the geographical region indicated therein is unlawful use of a geographical indication if the geographical indication might be misleading as to the true geographical origin of the product, and shall be considered an infringement of an appellation of origin right under sections 22 and 23.
Unlawful Use of a Geographical Indication Identifying Wine or Spirit Beverage
21B.—(a) Use of a geographical indication identifying wine or spirit beverages where the origin of the wine or spirit beverage is not from the geographical region indicated, constitutes an unlawful use of a geographical indication, and shall be treated as an infringement of an appellation of origin right under sections 22 and 23, even if the geographical indication is accompanied by expressions such as “sort”, “type”, “kind”, “imitation” or similar expressions or translations of them into a foreign language.
(b) Notwithstanding the provisions of sub-section (a), a person who has continuously used the geographical indication of a member state for identifying a wine or spirit beverage, may continue to use such geographical indication in respect of wine or spirit beverages or in respect of any related product if one of the following conditions exists:
21C. Despite the provisions of sections 21A and 21B, the following uses are lawful uses of a geographical indication:
(5) The following shall be inserted after section 22:
“Use of Name in Good Faith
22A. The lawful use of a geographical indication under this Law shall not prevent a person from using his own name or that of his predecessors in a business, provided that such use is in good faith and in such a way so as not to mislead the public.”;
(6) The following shall be inserted after section 33:
“Chapter 5.1
Rights in Respect of Trade Marks
Right to Continued Use of Trade Mark
33A. Notwithstanding the provisions of this Law, where an application is filed for the registration of a trade mark as defined under the Trade Marks Ordinance [New Version] 5732—1972 (hereinafter: the “trade mark”), or a trade mark is registered in good faith, or rights are acquired in a trade mark by use thereof in good faith, the fitness of the mark for registration, the validity or registration and the right of use of the trade mark shall not be prejudiced solely because the trade mark is identical or similar to a geographical indication, provided that the application for registration of the trade mark, the registration or the acquisition of rights as aforesaid were effected prior to 1 January 2000, or prior to the date on which the geographical indication was awarded protection in the member state in which the geographical region indicated in the geographical indication is situated.
Claim of Protection Before the Registrar and the Court
33B. In any proceedings before the Registrar or the Court in which a party raises a claim that he is proprietor of a geographical indication, the opposing party may claim that the geographical indication is not a geographical indication.”;
Amendment of Merchandise Marks Ordinance
8. In the Merchandise Marks Ordinance8, section 6A is repealed.
Amendment of Performers and Broadcasters Rights Law
9. In the Performers and Broadcasters Rights Law 5744—19849—
(1) In section 4D, the words “in sections 10, 11 and 12” shall replace the words “in sections 11 and 12”;
“The period of Broadcasters’ Rights
10A. The provisions of this Law shall not apply to a broadcast twenty five years after the year in which it was made.”
Chapter 7
Prohibited Imports and Exports
10. In the Customs Ordinance, the following shall be inserted after section 200:
“Detention of Infringing Goods
200A.—(a) Should the Director discover, via the receipt of notice as aforesaid in section 7D of the Copyright Ordinance, or in section 69A of the Trade Marks Ordinance [New Version] 5732—1972 (hereinafter: the “Trade Marks Ordinance”), or in any other manner, that a prima facie infringement of copyright or of a right in a trade mark has been committed, he shall take the following steps:
Release of Guarantees
200B. The Director shall refund the guarantee or guarantees to the person who deposited them as set out below, in accordance with the following circumstances:
(4) By order of the court.
Prohibited Import and Export
200C. Infringing goods imported into Israel shall be treated as goods the import and export of which is prohibited under this Ordinance.
Personal Import
200D. Sections 200A through 200C shall not apply to infringing goods imported for personal use as defined in Section 129.
Reservation of Powers
200E. The provisions of Sections 200A through 200D are in addition to the Director’s authority under any other law.”
Commencement
11. This law shall come into force on 23 Tevet 5760 (1 January 2000) (hereinafter: the “date of commencement”).
Application and Transitional Provisions
12.—(a) The provisions of section 3F1 of the Copyright Ordinance as set out in section 2(3) of this Law shall not apply to the hiring of computer programs acquired prior to the date of commencement.
In this section, an “application for registration”—an application to register a design under the Patents and Designs Ordinance, an application to register a Patent under the Patents Law 5725—1965, and an application to register a trade mark under the Trade Marks Ordinance [New Version] 5732—1972.
1 Laws of Palestine, Vol. I., p. (H) 369, (E) 389.
2 Laws of Palestine, Vol. II, p. (H) 2635, (E) 2475.
3 Sefer Hachukim, 5755, p. 366.
4 Laws of Palestine, Vol. II, p. (H) 1053, (E) 1076.
* These agreements are deposited in the Ministry of Industry and Trade and any person may inspect them. 5Treaties, Vol. 21, p. 495. ** These agreements are deposited in the Ministry of Industry and Trade and any person may inspect them. 6 Sefer Hachukim 5727, p. 148. *** These agreements are deposited in the Ministry of Industry and Trade and any person may inspect them.
7 Dinei Medinat Yisrael, [New Version], 26, 5732, p. 511. **** These agreements are deposited in the Ministry of Industry and Trade and any person may inspect them.
*****
(Translator’s Note: this footnote does not appear in the original).
8
(Translator’s Note: this footnote does not appear in the original).
9
(Translator’s Note: this footnote does not appear in the original).