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The Designs Law, 5777-2017*
Chapter1: Definitions
Definitions 1. In this Law –
"The Paris Convention" means the Paris Convention for the Protection
of Industrial Property, signed at Paris on the11th of Adar II, 5643
(March 20, 1883)1, as revised and amended, to the extent that Israel is
bound by such;
"The World Trade Organization" means the World Trade Organization
established under the agreement signed at Marrakech on the 4th of Iyar,
5754 (April 15, 1994);
"Proprietor of a design" means the owner of a design under the
provisions of Article 1 of Chapter 3, and anyone to whom the ownership
of the design was duly transferred;
"Design application" means an application to register a design that was
filed pursuant to the provisions of Article 1 of Chapter 4;
"The Competent Authority" means one of the following:
(1) The Commissioner;
(2) An employee of the Authority to whom the Commissioner has
delegated his power pursuant to the provisions of section 95;
"The Locarno Agreement" means the Agreement Establishing an
International Classification for Industrial Designs signed at Locarno on
the 16th of Tishrei, 5729 (October 8, 1968), as revised and amended ;
The "Economic Affairs Committee" means the Economic Affairs
Committee of the Knesset;
t The "Patents Law" means the Patents Law of, 5727-19672;
"Member State" means a "Union State" or a state member of the World
Trade Organization;
* Passed by the Knesset on the 3rd Av, 5777(July 26, 2017); the Bill and Explanatory Notes were published in
Hatza’ot Chok Memshala No. 928 of 19th Tamuz, 5775 (July 6, 2015), page 696. 1 Kitvei Amana No. 735, Volume 21, page 495. 2 Sefer HaChukkim of 5727, page 148.
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"Union State" means a state that is a member of the Union for the
Protection of Industrial Property under the Paris Convention, or a group
of Union states that established a joint system for filling design
applications, including territories which the Paris Convention was
applied under the powers granted for this regard in the aforesaid
Convention;
“ The "Relevant Date means the date as detailed below, upon each case:
(1) Regarding a design to which an application was filed – the date of
filing the design application under section 20, if a prior application was
filed regarding the design, according to the conditions enumerated in
section 21, and the conditions have been satisfied – the date of filing the
prior application, within the meaning in section 21;
(2) Regarding a design to which no design application was filed – the
date on which the proprietor of the design, or anyone on his behalf, first
made public the design or the design product, in Israel or abroad;
"Product" including a set of articles, packaging, graphic symbol, screen
display, excluding typeface and computer program;
"Designer" means a person who has designed a design, and if the design
was designed by two or more persons jointly – all jointly;
"Set of articles" means at least two articles with respect to which all the
following conditions are satisfied:
(1) They are in the same class;
(2) Their visual characteristics differ from each other only in immaterial
details;
(3) They are ordinarily offered for sale together, or are intended to be
used together;
"Informed user" means a person interested in a design product the for its
use, familiar with the variety of designs existing in the sector to which
the aforesaid product belongs;
"Design" means the appearance of a product or part of a product,
composed of one or more visual characteristic of the product or of part
of the product, as the case may be, including outline, color, shape,
decoration, texture or the material from which they are made;
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"Unregistered design" means a design that is not a registered design;
"Registered design" means a design that is registered in the Register;
the "Register" means the Register of Designs, within the meaning in
section 102;
"Making public" means each of the acts set forth herein, including if
performed over the Internet:
(1) making a design public;
(2) design product have been made available to the public;
(3) a design product have been offered for sale;
the "Authority" means the Israel Patent Office established under section
156 of the Patents Law;
"The Commissioner" means each of the following:
(1) the Commissioner of Designs, within the meaning in section 94;
(2) a person appointed as deputy Commissioner of Patents under
section 158 of the Patents Law;
(3) regarding the powers enumerated in sections 12(b), 34(b), 46 to
48, 98 and 99 – also anyone appointed as an IP Adjudicator under
section 172A(a) of the Patents Law;
"Personal use" is as defined in section 129 of the Customs Ordinance3;
"The Minister" means the Minister of Justice.
Chapter 2: Exclusivity of the Law's Provisions and Eligibility of Design for Protection
Exclusivity of
the Law
provisions of
2. There shall be no right in a design except under the provisions of this
Law.
Eligibility of
design for
protection as a
registered
design
3. A design will be eligible for protection as a registered design under the
provisions of Chapter 4, if it is novel and has an Individual character,
pursuant to the provisions of this Chapter.
3 Dinei Medinat Yisrael (Nusach Chadash) Vo. 3, page 39.
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Eligibility of a
design for
protection as
an
unregistered
design
4. (a) A design will be eligible for protection as an unregistered design
under the provisions of Chapter 5, upon the satisfaction of the
following two conditions:
(1) it is novel and has an individual character, pursuant to the
provisions of this Chapter;
(2) the design product the was offered for sale or distributed to the
public in Israel commercially by the proprietor of the design, or
anyone on his behalf, including over the Internet, within six months
of the relevant date.
(b) Notwithstanding the provisions of subsection (a)(2), where a treaty
has been signed between Israel and another state on the protection of
unregistered designs, or Israel has acceded to a treaty on this matter,
the Minister may, with the approval of the Economic Affairs
Committee, prescribe by order that the unregistered design that such
treaty obligates its protection in Israel, will be protected in Israel
pursuant to the provisions of the order, even if any condition in the
aforesaid subsection is not satisfied in its regard; however, the
protection over such a design will not exceed the protection that
would have been granted to the design if the conditions in subsection
(a)(2) have been satisfied in its regard, unless otherwise agreed in the
treaty, but not more than what was agreed.
a design
contrary to the
public policy
5. Notwithstanding the provisions of sections 3 and 4, a design contrary to
the public policy will not be eligible for protection.
Novel design 6. A design shall be deemed a novel design if, prior to the relevant date, a
design identical to it or a design that differs from it only in immaterial
details, was not made public in Israel or abroad.
A design of an
Individual
character
7. (a) A design shall be deemed of an Individual character if the overall
impression it creates for the informed user differs from the overall
impression created for such a user by another design that was made public
prior to the relevant date. For this purpose, designs concerning all classes
of products will be taken into account.
(b) In addition to the provisions of subsection (a), when determining
whether a design creates for the informed user a different general
impression as stated in the aforesaid subsection, should take into account,
inter alia, the various options available for designing designs with respect
to products from the field to which the product subject to the registered
design belongs.
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Limitation on
making public 8. The presentation of a design by the proprietor of the design to another
person will not be deemed making the design public if the person to
whom the design was presented agreed, explicitly or impliedly, not to
disclose the design.
Making public
not harming
eligibility for
protection as
registered
design
9. Making a design public will not harm the eligibility of the design for
protection as a registered design under the provisions of Chapter 4 if it
was done within the 12 months prior to the relevant date, as defined in
paragraph (1) of the definition of “relevant date” by the proprietor of the
design, or as a result of information originating in the proprietor of the
design, whether the information was obtained lawfully or unlawfully.
Visual
characteristic
of product
ineligible for
protection as a
design
10. Notwithstanding the provisions of this Chapter, the following are
ineligible for protection as a registered design or an unregistered design:
(1) the appearance of a product, or part of a product, dictated solely by
the function of the product;
(2) the appearance of a product or part of a product, if the product or part
of the aforesaid product were intended to connect to another product,
become integrated within another product or the other product is
integrated therein, and to achieve their aforesaid designation it is
necessary to manufacture them in the exact form and dimensions in which
they were manufactured.
Chapter 3: Design Ownership, Transferring ownership and Granting a License to Use a
Design
Article 1: Ownership of a Design
First
ownership of
design
11. The designer is the first proprietor of a design, unless determined
otherwise in this Chapter.
The first
proprietor of a
service design
12. (a) The first proprietor of a design that was designed by an employee in
the performance of his duties, or by actual use of the employer’s resources
(hereinafter referred to in this section as a “service design”) is the
employer, unless agreed otherwise between the employee and the
employer.
(b) In case a dispute arises on the question whether the design is a service
design, the employee or the employer, or anyone on their behalf, may
request that the Commissioner decide on the issue.
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The first
proprietor of a
design
designed upon
commission
13. The first owner of a design that was designed upon commission is the
customer, unless agreed otherwise between the customer and the
designer.
Presumption
of ownership
of design
14. (a) Whoever is registered in the Register as the proprietor of a registered
design will be deemed the proprietor of the registered design, unless
proven otherwise.
(b) Whoever has made public an unregistered design for the first time,
either himself or by means of anyone on his behalf, in Israel or abroad,
will be deemed the proprietor of the unregistered design, unless proven
otherwise.
Article 2: Transfer of Rights in Design and Grant of Licenses
Transfer of
rights and
grant of
licenses
15. (a) The rights in a design are wholly or partially transferable, under
agreement or under the provisions of any law, and the proprietor of the
design may grant with respect to such rights an exclusive license or a
non-exclusive license.
(b) An agreement for the transfer of rights in a design or the grant of an
exclusive license in its regard requires a written document.
(c) In this section –
“Exploitation of a design” means the exploitation of a registered design,
within the meaning in section 37, or the exploitation of an unregistered
design, within the meaning in section 61, as the case may be;
“Exclusive license” means a license granting its owner the right to
exploit the design, as determined in the license, and restricting the
proprietor of the design from exploiting the design himself and
permitting any other person from exploiting such design.
Validity of
transfer of
rights and
granting of
exclusive
licenses in a
design vis-à-
vis a third
party
16. The transfer of rights in a registered design and the grant of exclusive
licenses with respect to such rights pursuant to the provisions of section
15 are not valid vis-à-vis any other person unless registered in the
Register. The provisions of this section will not apply to the parties of
an agreement or to a person who knew of the transfer of rights or the
granting of such licenses.
Registration in
the Register of
rights and
licenses in a
17. A person to whom rights in a registered design were transferred, a person
who transferred to any other person his rights in a registered design, a
person who was granted a license in a registered design and a person
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registered
design or in a
design with
respect to
which a design
application
was filed
who granted another person a license in a registered design, pursuant to
the provisions of section 15, may request that the competent authority
record in the Register the rights or the grant of the license, as the case
may be, so that it reflects the rights or licenses in the registered design.
Where such a request has been submitted with the competent authority,
the competent authority will record in the Register the rights or the grant
of the license, according to the request. For the purpose of this section,
“Registered Design” includes a design with respect to which a design
application was filed
Chapter 4: Registered Design
Article 1: Design Application
Right to
request
registration of
a design
18. A proprietor of a design may file with the Authority a design application.
Filing a design
application 19. (a) A design application will include the details as set forth below, and
attached thereto a certificate on payment of the fee under section
112(a)(5) for filing the application:
(1) name of the design proprietor ;
(2) address for delivery of documents in Israel;
(3) with respect to each design included in the application, all the
following:
(a) an explanation on how the design applicant is the proprietor
of the design;
(b) the class and sub-class in which the registration is requested,
pursuant to the provisions under section 112(a)(1);
(c) a proper visual description of the design, pursuant to the
criteria determined by the Minister.
(b) A design application can include several designs.
(c) If a design is under the joint ownership of two or more persons
(hereinafter in this Law, a “design under joint ownership”), each of the
joint proprietors may file on behalf of all the joint proprietors a design
application, by noting the joint ownership and the names of the joint
proprietors; a joint proprietor who filed such an application will deliver
a written notice thereof to all the other joint proprietors of the design.
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(d) Each of the joint proprietors of a design under joint ownership may
renounce his share in such design by delivering a notice thereof to the
Commissioner. Where such a notice has been delivered to the
Commissioner, the Commissioner will delete the name of the joint
proprietor who delivered such a notice from the design application.
(e) Where the design application included several designs, the competent
authority may divide it into several design applications for registration
of a so that each application includes one design.
Date of filing a
design
application
20. (a) The date of filing a design application will be the date on which the
application was first filed with the Authority.
(b) Notwithstanding the provisions of subsection (a), where a design
application was filed and included one of the deficiencies enumerated
below, the date of filing the application will be the date on which the
aforesaid deficiency was amended:
(1) the application does not include the name of the proprietor of the
design;
(2) the application does not include a proper visual description of the
design, pursuant to the provisions under section 19(a)(3)(c);
(3) The application's filing fee in accordance to section 112(a) (5) for
was not paid.
(c) The Authority will notify the applicant about any deficiency under
subsection (b) as promptly as possible, and no later than 21 days after
the date of first filing the application or the date on which the applicant
remedied the deficiency after the Authority has notified him about the
existence of such deficiency, as the case may be. Where an application
has been filed with the Authority, pursuant to the provisions of section
17, the Authority will notify under this subsection the person to whom
the rights in the design application were transferred.
Priority 21. Where the proprietor of a design has filed a design application, with
respect to which or with respect to a design that differs from it only in
immaterial details, the proprietor of the design or anyone preceding him
in ownership has already filed a prior registration application in a
member state or a prior application under the Paris Convention, which
is as if the application had been filed in a union state (hereinafter referred
to in this section as a “prior application”), the proprietor of the design
may demand with respect to sections 6, 7 and 32 that the date of filing
the prior application will be deemed as the date of filing the design
application in Israel, if all the following are satisfied:
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(1) the design application in Israel was filed within six months of the
filing date of the prior application, and if more than one prior application
was filed to register the same design – from the date on which the first
prior application was filed pursuant to the provisions of the Paris
Convention;
(2) the request for recognition of the date of filing the prior application
was filed on the date and in the manner prescribed by the Minister;
(3) a copy of the prior application, certified by the competent authority
with whom such application was filed was submitted to the competent
authority on the date and in the manner prescribed by the Minister.
Publication of
a design
application.
22. (a) Where a design application has been filed, the competent authority
will publish the application, including the visual description of the
design included therein, on the Authority’s website, as soon as possible
after its filing.
(b) Notwithstanding the provisions of subsection (a), the applicant may
request that the competent authority postpone the date of publication of
the design application for a period not exceeding six months from the
date of filing the application. The competent authority will postpone the
date of publication of the application as requested.
(c) Where a request has been filed for the postponement of the
publication date as stated in subsection (b), the applicant may request
that the competent authority, at every stage during the period of
postponement, publish the design application before the expiration of the
period of postponement. Where such an application has been filed, the
provisions of subsection (a) will apply, mutatis mutandis.
Amendment of
a design
application
upon the
applicant's
request d by
23. (a) An applicant may, up to the date of registration of a design under
section 31, request that the competent authority amend his design
application, only if such an amendment does not alter the design in its
material details. Where the competent authority has permitted the
amendment of such application, the provisions of section 29(c) will
apply with respect to the amended application.
(b) Where a design application has been filed under joint ownership,
each of the joint proprietors of the design may file a request as stated in
subsection (a), only if he obtained the consent of all the other joint
proprietors of the design.
Withdrawal
from a design
application
24. (a) An applicant may withdraw from a design application no later than
the date of registration of the design under section 31.
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(b) Where a design application has been filed under joint ownership,
each of the joint proprietors may withdraw from the application as stated
in subsection (a), only if such proprietor obtained the consent of all the
other joint proprietors of the design.
Disagreements
between joint
proprietors of
a design
application
25. Where a design application under joint ownership has been filed and the
Commissioner is convinced that the handling of the application is being
delayed as a result of disagreements which arose between the partners,
he may act at the initiative of part of the joint proprietors and give
instructions with respect to such an application, only if the initiators of
the act deliver to the remaining joint proprietors not party to it, notice on
every proceeding before the Commissioner and of every amendment of
the application.
Article 2: Examination of A design application
Examination
of a design
application
26. (a) Where a design application has been filed, the competent authority
will examine if the design included in the application is eligible for
protection as a registered design pursuant to the provisions of Chapter 2.
Where the design product was a set of articles, the competent authority
will examine the satisfaction of the aforesaid conditions with respect to
each of the articles in the set.
(b) In an examination under this section the competent authority may
rely, inter alia, on documents submitted up to the date of registration by
anyone who is not the applicant. This submission of documents will not
obligate the competent authority to notify the party that submitted such
documents about the examination proceedings of the design application
or of its decision regarding the application.
Postponement
of continued
examination
27. Where the competent authority has found that the design with respect to
which a design application was filed is likely not to be eligible for
protection as a registered design pursuant to the provisions of Chapter 2
due to the existence of a design application that was filed on a date prior
to the relevant date (hereinafter in this section the “first application”), he
may order that the continued examination of the later application will be
postponed until after registration under section 31 of the design with
respect to which the first application was filed, or until the withdrawal
by the applicant of the first application under section 24, or until the
refusal to register the design with respect to which the first application
was filed under section 30, all according to the earliest.
Advancing the
examination 28. (a) An applicant may file with the competent authority a reasoned
request, together with an affidavit in support of the facts, for an
expedited examination of the design application he filed (in this section,
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the “expedited examination request”) on account of one or more of the
following:
(1) the advanced age or medical condition of the applicant;
(2) another person began exploiting the design in regard to which
the design application was filed, or a design differing from it in
immaterial details, without the applicant’s permission, or there is
cause for concern that he will do so. For the purpose of this
section, “exploiting the design” means the performance of any of
the acts enumerated in section 37;
(3) the duration of time which has elapsed since the design
application was filed is significantly longer than the time which
elapsed up to the commencement of the examination of other
applications filed at the same time;
(4) special circumstances justifying this.
(b) A request as stated in subsection (a) (2) will be filed with the
competent authority together with a certificate on payment of the fee
under section 112(a) (5).
(c) Where the competent authority has found that the conditions stated
in subsections (a) and (b) are satisfied, an examination of the eligibility
of the design subject to the protection application as a registered design
pursuant to the provisions of Chapter 2 will be performed as close as
possible to the filing date of the request for an expedited examination.
Where the design with respect to which such examination was made is
registered in the Register, the act of the application examination shall be
noted in the Register and in the publication under section 31.
Notice on
deficiencies
and
amendment of
deficiencies
29. (a) Where the competent authority saw that the design application does
not comply with the provisions of Article 1, with the exception of the
provisions of section 20(b)(1) and (3), or that the design with respect to
which the registration application was filed is not eligible for protection
as a registered design pursuant to the provisions of Chapter 2, he will
notify the applicant of the deficiencies in the application or of the reasons
for the ineligibility of such design for protection as a registered design
(hereinafter referred to in this section as “deficiencies”).
(b) Where an applicant has been notified under subsection (a), he may
amend the deficiencies in the application pursuant to the notice of the
competent authority within the period prescribed by the Minister,
provided however that the amendment will not alter the design in its
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material details (hereinafter referred to in this section as an “amended
application).
(c) Where the application has been amended pursuant to the provisions
of subsection (b), the amended application will be deemed to have been
filed on the relevant date and it will be examined pursuant to the
provisions of this Article.
Refusal of A
design
application
30. (a) Where the applicant has failed to amend the deficiencies in the
application pursuant to the notice of the competent authority under
section 29, within the period prescribed by the Minister, the competent
authority will refuse to register the design and will notify the applicant.
(b) Where the competent authority has refused to register the design as
stated in subsection (a), it may, upon the applicant's request, reconsider
the aforesaid refusal, provided however that the request for
reconsideration is filed within three months from the date on which the
notice of the competent authority’s refusal of the registration was sent
to the applicant.
Article 3: Design Registration
Design
Registration 31. (a) Where the competent authority is convinced that the design with
respect to which the design application was filed is eligible for protection
as a registered design pursuant to the provisions of Chapter 2, the
Commissioner will register the design in the Register and publish on the
website of the Authority such registration, the visual description of the
design and the name of the proprietor of the design, and will also deliver
to the proprietor of the design a certificate attesting to the registration
(hereinafter referred to in this Article as the “certificate of registration”).
(b) Registration in the Register will be according to sub-classes, pursuant
to the provisions prescribed by the Minister under section 112(a) (1).
The competent authority will determine the class and sub-class of the
design according to the ordinary use of the design product taking into
consideration the requested class and sub-class.
(c) Registration of a design in the Register is a condition for the validity
of its protection as a registered design under this Chapter and will be
prima facie evidence as to the validity of the registered design.
First come,
first served 32. Where two or more applicants have filed separate registration
applications for the same design or of designs that differ from each other
only in immaterial details, the design will be registered in the Register
in the name of the person who first duly applied for it.
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Listing the
designer’s
name
33. (a) A designer of a design to which a registration application was filed,
or his successors, may request from the competent authority to list the
designer's name in the Register or the registration certificate, as the case
may be, pursuant to the provisions of subsection (b) (hereinafter referred
to in this section as a “request to list the designer’s name”).
(b) Where the designer of a design or his successors have filed a request
to list the designer’s name, and the competent authority is convinced that
the person in whose name the registration is requested is indeed the
designer, the competent authority will list the designer’s name as
requested, pursuant to the following provisions:
(1) if the request to list the designer’s name was filed before the
design was registered under section 31 – the name of the designer of
the design will be listed in the Register and in the registration
certificate;
(2) if the request to list the designer’s name was filed after the design
was registered under section 31 – the name of the designer of the
design will be listed in the Register only;
(3) notwithstanding the provisions of paragraph (2), if the designer
is the proprietor of the registered design, he may request that the
competent authority amend the registration certificate to include his
name, after having paid the request fee under section 112(a)(5).
Where such request has been filed, the competent authority will send
the proprietor of the registered design an amended registration
certificate as requested.
(c) The competent authority shall notify the applicant of the design
application or the proprietor of the registered design, as the case may be,
about listing the designer’s name as stated in subsection (b), and if a
request was filed to list the designer’s name by any other person or where
another person is registered in the Register as designer – also to such
person.
Cancelation of
listing a
designer’s
name
34. (a) Where the name of a person has been listed as the designer of a design
pursuant to the provisions of section 33, any person who believes that
such listing of the name does not reflect the facts may file with the
Commissioner a request to cancel the listing of the designer’s name from
the design registration in the Register (hereinafter referred to in this
section as a “request to cancel the listing of the designer’s name”).
(b) Where a request to cancel the listing of the designer’s name has been
filed, the Commissioner will decide the matter and notify the person who
filed the cancelation of the listing request of his decision, a notification
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shall be sent to anyone who was notified about listing the designer’s
name under section 33(c), he will also amend the registration in the
Register according to his decision.
Waiver of
listing a
designer’s
name
35. A stipulation in an agreement wherein the designer waives the right to
request a list his name pursuant to the provisions of section 33 will be of
no effect.
Listing the
designer’s
name does not
grant rights
36. Anyone whose name is listed in the Register as a designer pursuant to
the provisions of section 33 will not be entitled, for this reason alone, to
any right whatsoever in the registered design.
Article 4: Rights Deriving from a Registered Design and the Period of its Validity
Rights of
proprietor of
registered
design
37. (a) Registration of a design pursuant to the provisions of this Chapter
grants the proprietor of the registered design an exclusive right to
perform all of the acts enumerated below, with respect to the registered
design and any other design which creates for the informed user a
general impression that does not differ from the general impression
created by the registered design, and if the design product is a set of
articles – with respect to each of the articles in the set (hereinafter
referred to in this Article as “exploitation of registered design”):
(1) manufacture, sale or lease, including a bid or position for sale or
lease of a registered design product, in a commercial manner, the
distribution of such product on a commercial scale or its import into
Israel not for personal use, except importing to Israel a product
manufactured abroad with the permission of the proprietor of the
design, or anyone on his behalf;
(2) possession of a registered design product for the purpose of
performing any of the acts enumerated in paragraph (1).
(b) When determining whether a design creates for an informed user a
general impression not differing from the general impression the
registered design creates for him, as stated in subsection (a), It shall take
into account, inter alia, the various options available for designing
designs with respect to products from the field to which the registered
design product belongs.
Limitation on
exploiting
registered
design
38. Notwithstanding the provisions of section 37, the registration of a design
does not constitute a permission to exploit the registered design in a
manner of violating existing rights under the provisions of any law.
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The validity
period of a
registered
design
39. The validity period of a registered design is 25 years from the date of
filing the design application under section 20, subject to the provisions
under Article 5.
Article 5: Fees
Payment of
renewal fee 40. A registered design will be valid for the entire period determined in
section 39 if the proprietor of the design paid a renewal fee in the
amounts and on the due dates prescribed by the Minister under section
112(a)(5) (hereinafter referred to in this Chapter as the “renewal fee”).
Delay in
payment of
renewal fee
41. Where the renewal fee is not paid on the due date as stated in section 40,
it may be paid within six months of such date, with an additional fee in
the amount prescribed by the Minister under section 112(a) (5) for the
delay in payment, and when made the renewal fee will be deemed to
have been paid on the due date determined for its payment as stated in
section 40.
Lapse of
validity of
registered
design due to
non-payment
of fees
42. Where the period stated in section 41 has elapsed and the fees as stated
in the same section have not been paid, the validity of the registered
design will lapse from the renewal due date as stated in section 40. The
Commissioner will register the validity lapse of the registered design in
the Register and will publish a notice thereof on the Authority’s website.
validity
Renewal of
registered
design that
lapsed due to
non-payment
of fees
43. (a) A proprietor of a registered design of which its validity lapsed due to
non-payment of fees as stated in section 42, may request from the
Commissioner within six months of the date the validity lapse of the
registered design was registered under the provisions of that section, in
the manner and form prescribed by the Minister, the validity renewal of
the registered design, provided however that he specifies in his request
the reasons for non-payment of the fees (hereinafter referred to in this
Article as the “request for validity renewal”).
(b) Where a request for validity renewal has been filed, the
Commissioner will renew the design validity if he found that the delay
in payment of the fees as stated in section 41 was caused notwithstanding
the fact the proprietor of the registered design took reasonable measures
in the specific circumstances to pay the fees on time, provided however
that the applicant paid the fees as stated in the section. The
Commissioner will publish a notice of the validity renewal of the
registered design on the Authority’s website.
(c) The validity renewal of a registered design that has lapsed under the
provisions of this section will not extend the period of validity of the
design beyond the period stated in section 39.
16
A person
exploiting a
registered
design of
which the
validity has
lapsed and
renewed
44. (a) A person who began exploiting in Israel a registered design of which
the validity has lapsed, or anyone who has made proper preparations to
exploit in Israel a registered design of which validity has lapsed, after
the notice regarding the validity lapse of the registered design was
published under section 42 and prior to publication of its validity
renewal under section 43(b), is entitled to further exploit the design for
the purposes of his business only, even after the validity renewal of the
registered design.
(b) The right to exploit a registered design under this section is non-
transferable and non-inheritable, except together with the business in
which the design was exploited, and no licenses may be granted in its
regard except by the business in which the design was exploited.
Provisions on
notice to
proprietor of a
registered
design prior to
the validity
lapse of the
design
45. The Minister, with the approval of the Economic Affairs Committee,
will prescribe provisions on the Authority’s obligation to send an
electronic notice to the proprietor of a registered design stating that the
validity of the registered design is expected to lapse due to non-timely
payment of the fee pursuant to the provisions of this Chapter, all as shall
be determined.
Article 6: Amendment of Records and Documents and Cancelation or Deletion of Registered Design
Amendment of
records and
documents
46. (a) The Commissioner may, at his own initiative or at the request of any
person, after having given the proprietor of the registered design an
opportunity to state his case under the provisions of this subsection,
amend a registered particular in the Register or in any other document
issued by the Authority under this Law if he is convinced that it does not
reflect the facts. The Minister may prescribe types of particulars that may
be amended in this manner and provisions on the amendment process
under this subsection.
(b) The Commissioner may, at his own initiative or at the request of any
person, amend a typographical error in the Register, or in any other
document issued by the Authority under this Law.
(c) Where a request has been filed as stated in subsection (a) not by the
proprietor of the registered design, the Authority will notify thereof to
the proprietor of the registered design.
Deletion or
cancelation of
design
registration in
Register, at the
request of the
proprietor of
47. (a) The proprietor of a registered design may request from the
Commissioner to delete or cancel the registration of a registered design
in the Register (hereinafter referred to in this Article as “request for
deletion or cancelation”). If the registered design is under joint
ownership, each of the joint proprietors of the design may file a request
17
the registered
design for deletion or cancelation, provided however that obtains a written
consent from all the other joint proprietors of the design.
(b) The Commissioner will publish on the Authority’s website a notice
on the filing of a request for deletion or cancelation.
(c) The Commissioner will decide on the request for deletion or
cancelation, will notify the parties of his decision and publish his
decision on the Authority’s website.
(d) Where the Commissioner has decided to accept the request for
deletion or cancelation, he will record the deletion or cancelation of the
design in the Register at the request of the proprietor of the design.
Cancelation of
registration of
design in
Register,
cancelation of
renewal of
validity of
design that
lapsed and
cancelation of
amendment of
a registered
particular, at
the request of
a person who
is not the
proprietor of a
registered
design
48. (a) Any person who is not a proprietor of the registered design may
request that the Commissioner cancel the registration of a registered
design in the Register, upon fulfillment of one of the following
conditions:
(1) the design was ineligible for protection as a registered design
pursuant to the provisions of Chapter 2;
(2) the registration application of the design was not filed by the
proprietor of the design, contrary to the provisions of section 18;
(3) two or more separate applications were filed for registration of
the same design or of a design that differed from it only in
immaterial details, and the design was not registered in the name of
the person who first duly applied for it, contrary to the provisions of
section 32.
(b) Any person who is not the proprietor of the registered design may
request that the Commissioner cancel the validity renewal of a registered
design that lapsed as stated in section 43, under the assertion that the
conditions for the validity renewal under the aforesaid section were not
satisfied.
(c) Any person who is not a proprietor of the registered design may
request that the Commissioner cancel the amendment of a particular
recorded in the Register or in any other document issued by the Authority
under this Law (hereinafter referred to in this Article as “cancel an
amendment”) performed under section 46, under the assertion that the
conditions for amendment under the aforesaid section were not satisfied.
(d) A person who filed a request under subsections (a) to (c) will notify
the proprietor of the registered design regarding the filing of the request,
18
and he will be the respondent in the request. The Commissioner shall
publish on the Authority’s website a notice about the filing of the
aforesaid request.
(e) The Commissioner will notify the parties of his decision in the
request under this section. If the Commissioner decided to accept the
request under this section, he will note in the Register the cancelation of
the registered design, the cancelation of the validity renewal or the
cancelation of the amendment, as the case may be.
Results of
request under
section 47 or
48
49. (a) Where the Commissioner has decided to delete the registration of a
registered design upon request under section 47, the Commissioner will
note the deletion in the Register on the date of entry into effect of the
decision under section 50, and the design will be deemed to have been
deleted from the Register on the date of filing such request.
(b) Where the Commissioner has decided to cancel the registration of a
registered design upon request under section 47 or 48, the Commissioner
will note the cancelation in the Register on the date of entry into effect
of the decision under section 50, and the design will be deemed to have
not been registered in the Register.
(c) Where the Commissioner has decided to cancel the renewal of
validity of a registered design which lapsed upon request under section
48(b), the Commissioner will note the cancelation of the validity renewal
in the Register on the date of entry into effect of the decision under
section 50, and the design will be deemed to have lapsed on the date
stated in section 42.
(d) Where the Commissioner has decided on the cancelation of an
amendment of a particular upon request under section 48(c), the
Commissioner will note the cancelation in the Register on the date of
entry into effect of the decision under section 50, and the particular will
be regarded as if the aforesaid amendment had not been implemented.
Entry into
effect of
decisions of
the
Commissioner
under sections
47 or 48
50. A decision of the Commissioner under section 47 or 48 will enter into
effect 30 days after the expiration of the period for filing an appeal on
the decision under section 106.
Limitation
period for
assertions with
respect to a
registered
design
51. An assertion that a design was ineligible for protection as a registered
design under the provisions of Chapter 2, assertions on the cancelation
of listing a designer’s name, cancelation of a design registration,
cancelation of an amendment of a registered particular or cancelation of
validity renewal of a registered design that lapsed, as well as assertions
relating to the identity of the proprietor of a registered design are not
19
subject to a limitation period during the validity period of the registered
design.
Article 7: Supplementary Design
Definition –
Article 7 of
Chapter 4
52. In this Article, “supplementary design” in relation to a registered design
or a design with respect to which a design application was filed
(hereinafter referred to in this Article as the “main design” is a design
satisfying each of the following:
(1) the design product is the main design product, and the visual
characteristics of the design differ from the visual characteristics of the
main design only in immaterial details;
(2) the design product is not the main design product, and the visual
characteristics of the design are identical to the visual characteristics of
the main design.
Eligibility for
protection as
supplementary
design
53. Notwithstanding the provisions of section 3, a supplementary design will
be eligible for protection as a supplementary registered design even if it
is not novel and without an individual character in relation to the main
design only.
Application of
provisions
with respect to
supplementary
design
54. The provisions of this section will apply with respect to a supplementary
design, mutatis mutandis and with the changes set forth in this Article.
Application
for registration
of
supplementary
design
55. (a) A proprietor of a main design may request that a design with respect
to which he filed a design application is registered as a supplementary
design under the provisions of this Article (hereinafter referred to in this
Article as an “application”. The proprietor of the design will state in such
application the main design in relation to which the registration of a
supplementary design was requested.
(b) A supplementary design application will be filed together with the
main design application or at a later date during the validity period of
the main design.
Examination
of
supplementary
design
application
56. Where supplementary design application has been filed a and the
competent authority found that the conditions enumerated in the
definition of “supplementary design” in section 52 are not satisfied with
respect to the design –
(1) he will notify the applicant thereof;
20
(2) he will examine, at the request of the applicant, the eligibility of the
design for protection as an independent registered design pursuant to the
provisions of section 26, provided however that the applicant paid the
fee under section 112(a)(5) for filing the application.
Limitation on
supplementary
design
registration
57. A design will not be registered as a supplementary design if the
application for its registration was filed before the date of filing the main
design application.
Lapse of
validity of
supplementary
design
58. Where the validity of the main design has lapsed, the validity of the
supplementary design will lapse together with it, subject to the
provisions of section 60.
Payment of
renewal fee for
supplementary
design
59. The renewal fee for a supplementary design will be paid on the relevant
date for payment of the renewal fee for the main design, pursuant to the
provisions under Article 5.
Validity of
supplementary
design upon
cancelation or
deletion of the
main design
60. (a) Where the main design has been canceled or deleted under the
provisions of Article 6 and its supplementary design has not been
canceled or deleted with it, the supplementary design will be an
independent design, if the proprietor of the supplementary design so
requested.
(b) Where the main design has been canceled or deleted as stated in
subsection (a) and the main design had several supplementary designs,
the proprietor of the design may state in his application under this section
which of these will be registered as the main design, and the remainder
will be registered as supplementary designs.
(c) Notwithstanding the provisions of subsection (b), where the
competent authority found with respect to any of the designs as stated in
the subsection, that the conditions enumerated in the definition of
“supplementary design” in section 52 are not satisfied, he will register
each of them as an independent design if the conditions of eligibility for
protection as a registered design under Chapter 2 are satisfied, and he
may, if the proprietor of the design so requested, register according to
the provisions under this Article, one of the designs as the main design
and the remainder as supplementary designs.
(d) Supplementary designs as stated in subsections (a) and (b) will
remain valid until the expiration of the period in which the main design
would have remained valid, had it not been canceled or deleted, provided
however that the renewal fees as stated in Article 5 were paid, as
imposed in section 59.
Chapter 5: Unregistered Design
21
Rights of a
proprietor of
an
unregistered
design
61. The proprietor of an unregistered design eligible for protection pursuant
to the provisions of Chapter 2 shall be vested the exclusive right to
prevent any other person from manufacturing, for commercial use, a
design product which is a replication of the design, whether the
replication is carried out by manufacturing an identical design product
or whether it is carried out by manufacturing another design product
creates with an informed user a general impression not differing from
the general impression the design product creates with him (hereinafter
referred to in this Article as “exploitation of an unregistered design”). If
the design product is a set of articles, the aforesaid right will apply with
respect to each of the articles in the set.
(b) When determining whether a design creates for an informed user a
general impression not differing from the general impression the design
product creates for him, as stated in subsection (a), It shall take into
account, inter alia, the various options available for designing designs
with respect to products from the field to which the design product
belongs.
Marking an
unregistered
design
62. A proprietor of an unregistered design believing that his design is
eligible for protection as an unregistered design under the provisions of
this Law may mark the design product in the manner prescribed by the
Minister; the mark will indicate that this is an unregistered design and
the relevant date applying to the design.
Limitation on
exploitation of
an
unregistered
design
63. Notwithstanding the provisions of section 61, the protection of a design
as an unregistered design does not constitute a permission to exploit the
design as stated in that section in a manner of violating existing rights
under the provisions of any law.
Application
for registration
of an
unregistered
design
64. A proprietor of an unregistered design may, within twelve months of the
relevant date, file with the Authority an application for registration of
the unregistered design and the provisions under Chapter 4 will apply
with respect to the application, examination of the application and
registration of the design.
Period of
validity of
unregistered
design
65. The period of validity of an unregistered design is three years from the
relevant date.
Chapter 6: Design Infringement
Infringement
of a registered
design
66. A person exploiting a registered design as stated in section 37, either on
his own or through another, after the date of publication of the design
application under section 22 and without the permission of the proprietor
of the registered design, is infringing the registered design.
22
Infringement
of unregistered
design
67. A person exploiting an unregistered design as stated in section 61, either
on his own or through another, after the relevant date and without the
permission of the proprietor of the unregistered design, is infringing the
unregistered design.
Indirect
infringement
of an
unregistered
design
68. (a) A person doing any of the acts specified below in an unregistered
design product is infringing the unregistered design, if at the time of
doing the act he knew or should have known that the design product is
an infringing product:
(1) sale or lease, including a bid or position for sale or lease, in a
commercial manner;
(2) possession for the purpose of doing any of the acts stated in
paragraph (1);
(3) distribution on a commercial scale;
(4) import to Israel not for personal use.
(b) In this section, “infringing product” means an unregistered design
product manufactured without the permission of the proprietor of the
unregistered design, excluding such product that was manufactured
outside of Israel with the permission of the proprietor of the design or
anyone on his behalf.
Presumption
of knowledge
with respect to
unregistered
design
69. Where the proprietor of an unregistered design has marked the design
product pursuant to the provisions under section 62, it is presumed that
anyone who exploited the unregistered design as stated in section 67, or
carried out an act as stated in section 68, knew that the proprietor of the
unregistered design believed that his design was eligible for protection
as an unregistered design pursuant to the provisions of this Law.
Defense in an
action on
infringement
of registered
design
70. (a) Any ground under which a registered design can be cancelled shall
serve as a good defense in a registered design infringement action.
Where the court is convinced that there is such a good defense, it will
order the cancelation of the design registration or the amendment of the
registration in the Register so that it reflects the rights in the registered
design. Where the court has ordered the cancelation of such registration,
the provisions of section 49(b) will apply to this matter, mutatis
mutandis.
23
(b) An assertion that an unregistered design was ineligible for protection
under the provisions of this Law will serve as a good defense in an
unregistered design infringement action.
Action for
design
infringement
71. (a) A design infringement action may be filed by the design proprietor,
and if an exclusive license is granted with respect to the design under
section 15 – also the aforesaid licensee. However, where an agreement
has been made with respect to a registered design pursuant to the
provisions of section 15 and the rights have not yet been registered in
the Register in its regard pursuant to the provisions of section 17, a party
to the agreement whose rights under the agreement have not yet been
registered in the Register may file a design infringement action.
(b) Where the design is under joint ownership, each of the joint
proprietors of the design may file a design infringement action.
(c) No action should be filed under the cause of a registered design
infringement except after the design is registered; however, where an
action has been filed for such infringement, the court may grant a remedy
for the infringement of the design as registered done after the date of
publishing the filing of the design application under section 22, as if a
registered design had been infringed. Nothing in the provisions of this
subsection will derogate from the right of the proprietor of the design to
file an action on the grounds of design infringement as an unregistered
design, as long as the design has not yet been registered.
(d) A plaintiff filing an action as stated in subsection (a) or (b) will join
as a party to the action any person entitled to claim under the aforesaid
provisions of the subsections; however, the court may, at the request of
the plaintiff, or at the request of any person whose joinder is requested,
exempt from the aforesaid joinder of a party.
Declaration on
non-
infringement
of design
72. (a) Anyone who intends to perform any of the acts enumerated in section
37(a) or 61 may request from the court a declaratory judgment according
to which the act sought is not by any mean design infringement.
(b) Issuing such a declaratory judgment or refusing to issue it as stated
in subsection (a) will not determine on the question of the validity of the
design.
Chapter 7: Remedies for Design Infringement
Design
infringement –
a tort
73. Design infringement is a civil wrong and the provisions of the Torts
Ordinance [New Version]4 will apply to it, mutatis mutandis, and subject
to the provisions of this Law.
4 Dinei Medinat Yisrael (Nusach Chadash) No. 10, page 266.
24
injunction
order for
design
infringement
74. In an action on design infringement, the plaintiff is entitled to a remedy
by way of an injunction order, unless the court finds that there are
reasons that justify not making such an order.
compensation
without proof
of damage
75. (a) In an action on design infringement, the court may, at the request of
the plaintiff, award the plaintiff for any infringement, compensation
without proof of damage in an amount not exceeding 100,000 New
Israeli Shekels.
(b) When determining compensation under the provisions of subsection
(a), the court may take the following, inter alia, into considerations:
(1) the scope of the infringement;
(2) the severity of the infringement;
(3) the actual damage caused to the plaintiff, according to the court’s
estimation;
(4) the profit the defendant accrued, according to the court’s
estimation;
(5) the nature of the defendant’s activity;
(6) the nature of the relationship between the defendant and the
plaintiff;
(7) the defendant’s good faith, taking into account, inter alia, the
various options available for designing designs with respect to
products from the sector to which the registered design product
belongs.
(c) For the purpose of this section, infringements committed under one
set of acts will be deemed one infringement.
(d) The Minister, with the approval of the Economic Affairs Committee,
may, by order, alter the amount determined in subsection (a).
giving account 76. In an action for design infringement, the court may require the defendant
to give an account to the plaintiff in regard to the details of the
infringement. The Minister may prescribe the manner on how giving
account shall be done under this section.
Remedies
regarding
design
77. (a) Upon conclusion of an infringement action hearing of a right in a
design, the court may, after having taken into consideration, inter alia,
25
products in
which a right
has been
infringed
the severity of the infringement and the interest of any other person
concerned that is not a party to the action, order the following –
(1) the performing of an act with respect to the design products in
which the right was infringed (hereinafter referred to in this section
as the “infringing products”) the purpose of which is to prevent any
damage to the proprietor of the design, including the transfer of
ownership in said products to the plaintiff if he requested so, or their
destruction; however, where the court has ordered such transfer of
ownership, it may, if it found that the plaintiff is likely to use the
infringing products, charge him with payment as it shall determine;
(2) the performing of an act in assets whose main and central use was
for the manufacture of the infringing products whose purpose is to
prevent the continued infringement heard by the court, or any other
infringement of a right in the design.
(b) The provisions of subsection (a) will also apply with respect to a
product found in the possession of a person who did not personally
infringe the design, all subject to the provisions of section 34 of the Sale
Law, 5728-1968.5
Innocent
infringer 78. (a) In an action due to a design infringement, the infringer will not be
ordered to pay damages as a result of the infringement if he did not know
or could not have known, on the date of the infringement, that there were
rights in the design.
(b) Without derogating from the generality of the provisions of
subsection (a), it is presumed that the infringer knew that there are rights
in the design upon the fulfillment of the following conditions:
(1) the design was registered under section 31;
(2) with respect to an unregistered design – the design was marked
under section 62 or an application for its registration was published
under section 22.
The Designs Bill, 5775 – 2015
Chapter 7: International Designs
Article 1: Definitions
Definitions 79. In this section -
5 Sefer HaChukkim of 5728, page 98.
26
“International Application” means an application for the registration
of a design as a registered international design, submitted to the
International Bureau under the Hague Agreement;
“The Hague Agreement”, “The Agreement” – as defined in Article
1 of the Geneva Act;
“The International Register” – as defined in Article 1 of the Geneva
Act;
“The International Bureau” – as defined in Articles 1 and 22 of the
Geneva Act;
“The Hague Act” means the Hague Act of the Hague Agreement
concerning the international registration of industrial designs, dated
November 28th 1960;
“The Geneva Act” means the Geneva Act of the Hague Agreement
concerning the international registration of industrial designs, dated
July 2nd 1999;
“Registered International Design” means a design registered in the
International Register in accordance with the Hague Agreement;
“Registered International Design Designated for Israel” means a
registered international design where its registration application
designates the state of Israel as the destination for the registration of
the design;
“The Hague Regulations” means the common regulations under the
Geneva Act and the Hague Act, published on the website of WIPO
– World Intellectual Property Organization; as amended from time
to time.
Article 2: International Applications
filling an
International
Application
80. (a) An Israeli citizen, an Israeli resident or a person who has an
active industrial or commercial establishment in Israel, may file for
an International Application in accordance with the provisions of
subsection (b), together with fees as stipulated in the Hague
Agreement and the Hague Regulations.
(b) An International Application and any other document relating to
such an application that must be submitted or that may be submitted
pursuant to the Hague Agreement or the Hague Regulations, shall
be submitted in the form, in the manner and at the time prescribed
in the said agreement and regulations.
27
Forwarding an
International
Application
submitted to
the Authority
81. Without derogating from the provisions of section 80, the Minister
may prescribe provisions regarding filling an international
application and its transfer to the international Bureau through the
Office, upon the applicant's request, and the Minister may determine
under section 112(a) (5) that the applicant will be required to pay a
fee to the Office for transferring such application
Article 3: Handling Registered International Designs Designated for Israel
The status of a
Registered
International
Design
Designated for
Israel
82. A Registered International Design Designated for Israel shall be
deemed a design with respect to which an application to register the
design was filed under the provisions of Article 1 of chapter 4,
starting on the date of its registration in the international Register
under the provisions of the Hague Agreement.
Examination
of a Registered
International
Design
Designated for
Israel
83. (a) The competent Authority shall examine whether a registered
international design designated for Israel is illegible for protection
as a registered design under the provisions of part 2.
(b) Notwithstanding the provisions of chapter 2, the relevant date
for the purpose of examining the eligibility of such a design in
subsection (a) shall be the date of the design's registration in the
international register, and if the international application in respect
of such design included declaration of priority due to a prior
application as defined in section 21, one or more. Pursuant to the
provisions of section 6 of the Hague Agreement (in this section,
Prior Application), the relevant date shall be the date recognized by
the International Bureau, as the filling date of the international
application, provided that the applicant or the International Bureau
filed to the Office, on time and in the manner proscribed by the
Minister, a copy of the prior application allowed by the competent
authority the prior application was submitted to.
(c) Notwithstanding the provisions in subsection (b), a holder of a
registered international design designated for Israel may file a
request to recognize a priority for the registered international design
also under the provisions of section 21.
(d) the provisions of article 2 of chapter 4 shall apply for the purpose
of examining a registered international design designated for Israel
as stated in subsection (a), mutatis mutandis and subject to the
following changes; A notice of definition under section 29 may only
concern the ineligibility of the design for protection as a registered
design under the provisions of chapter 2, unless stipulated otherwise
under the Hague Agreement or the Hague Regulations.
28
Registration in
a Register of a
Registered
International
Design
Designated
Israel
84. Where the competent Authority deemed a Registered
International Design that is Designated for Israel is eligible for
protection as a registered design under the provisions of Chapter 2,
the provisions of article 3 of chapter 4 shall apply to the design
registration in the register, except for section 31(a) and (b), mutatis
mutandis and subject to the following changes; The Commissioner
shall register the design in the Register, it shall be noted in the
registration that the design is an international registered design, a
reference to the registration of the international registered design
shall be published on the International Bureau website, and notify
the international Bureau within 12 months from the date the design
was published regarding the protection granted to the design in
Israel.
Notice of
refusal
85. (a) Where the competent Authority deemed a Registered
International Design that is Designated for Israel is not eligible for
protection as a registered design under the provisions of Chapter 2,
it shall notify the international Bureau, within the period of twelve
months from the day the design was published in the international
Register, a notice of refusal to register the design (in this section –
Notice of refusal), attaching the reasons for this.
(b) Where the Competent Authority has deemed such design under
subsection (a) may be eligible for registrations as a supplementary
design under the provisions of Article 7 of Chapter 4, the following
provisions shall apply:
1. the Competent Authority shall send a notification of
refusal regarding the application as stated in subsection
(a) and it will send the international Bureau notice
thereof, unless prescribed otherwise by the minister and
in accordance with the provisions he prescribed.
2. the competent authority shall give notice to the
applicant that he is entitled to submit a supplementary
design application under the provisions of article 7 of
chapter 4 and that he is exempted from paying a fee for
such application.
3. if such application in paragraph (2) was submitted, the
provisions of section 7 of chapter 4 will apply, and the
relevant date for this matter is the date specified in
section 83(b); the authority will not charge an extra fee
for the application applied following the notice as stated
in this paragraph.
(c) If the competent authority did not send a notification of refusal
to the international bureau within the period mentioned in
subsection (a) or the design was not registered under the provisions
of section 84, the registered international design shall be deemed as
29
registered in the Register at the end of the aforesaid period, the
commissioner shall register it in the Register and publish it in
accordance with the provisions of section 84
(d) Where the competent authority, at any time, has deemed a
registered international design designated for Israel, of which a
refusal notification has been sent, eligible for protection as a
registered design under the provisions of chapter 2, it shall send the
international Bureau a notification of cancelation of such notice of
refusal, or a notification of grant of protection to the design in Israel
under the provisions of article 84, the provision of the aforesaid
article shall apply, mutatis mutandis.
Applying the
provisions on
an
International
Design
Registered in
Israel
86. When an international design is registered in the Register in
pursuant to the provisions of Article 84 or Article 85(c), such design
(in this chapter – an International Design Registered in Israel) will
be subject to the provisions of Article 2 of Chapter 3, Articles 4 to
6 of Chapter 4, except for the provisions of section 40, 41 and 47,
as well as chapter 5, 7 and 10, mutatis mutandis and according to
following changes.
(1) A renewal fees and an arrears fee payable in accordance with the
provisions of Article 17 of the Hague Agreement and the Hague
Regulations;
(2) The Minister may prescribe additional types of actions in
connection with an International Design Registered in Israel, which
shall be carried out only in accordance with the provisions of the
Hague Agreement and the Hague Regulations.
The effect of
amendments
to the
International
Register
87. (a) The Minister shall determine, in accordance with the provisions
of Article 16 of the Hague Agreement, types of amendments to an
international design registered in Israel, which if registered in the
international register; shall have validity as if they had been
registered in Israel.
(b) The competent official shall document such amendments in
subsection (a) in the Register.
Article 4: General Provisions regarding International Designs.
Notification
regarding
cancellation of
an
International
Design
88. The competent authority shall notify the International Bureau a
regarding any decision under Article 6 of Chapter 4 as applied
pursuant to the provisions of article 86, or of any court decision
under Article 70 in respect of which a notification has been given to
the Authority, regarding the deletion or cancellation of the
registration of an international design registered in Israel.
30
Registered in
Israel
Confidentiality
of the
documents
89. The competent authority and the Office employees shall not
disclose any information or document that they have received from
the International Bureau in the course of the execution of the
provisions under this chapter, all in accordance with the provisions
of the Hague Agreement.
Application of
the provisions
of the Hague
Agreement
and the Hague
Regulations
Publishing the
Hague
Agreement
90. In any matter relating to an International Application or a Registered
International Design, which has not been regulated under this
chapter, the provisions of the Hague Agreement and the Hague
Regulations shall apply, in accordance with the obligations of the
State of Israel with regard to said agreement and regulations.
91.The Office shall publish on its website the Hague agreement and
a reference to the Hague regulations
Chapter 9: Penalties
Penalties 92. (a) A person commercially exploiting a registered design through a
business in one of the ways specified below and without the permission
of the proprietor of the registered design, contrary to the provisions of
section 66 shall be liable to the fine prescribed in section 61(a)(4) of the
Penal Law, 5737-19776 (hereinafter referred to in this Chapter as the
“Penal Law”):
(1) the manufacture of a design product identical to the registered
design;
(2) the import of a design product identical to the registered design.
(b) Where an offense under this section has been committed by a
corporation, it shall be liable to double the fine prescribed for such
offense.
Liability of
officer of
corporation
93. (a) An officer of a corporation is obligated to oversee and do his utmost
to prevent any of the offenses specified in section 92 (hereinafter
referred to in this section as an “offense”) by a corporation or by any of
its employees; violation of the aforesaid duty shall make him liable to
the fine determined in section 61(a) (2) of the Penal Law.
6 Sefer HaChukkim of 5737, page 226.
31
(b) Where an offense has been committed by a corporation or any of its
employees, there is a presumed that the officer violated his duty under
subsection (a), unless he proved that he did his utmost to fulfill his
aforesaid duty.
(c) In this section, an “officer” is an active manager of a corporation, a
partner, with the exception of a limited partner, or the official
responsible on the corporation’s behalf for the sector in which the
offense was committed.
Chapter 10: Miscellaneous Provisions
Commissioner of
Designs 94. A person appointed as the Commissioner of Patents under section 157
of the Patents Law will also serve as Commissioner of Designs.
Delegation of
powers to
Commissioner
95. (a) The Commissioner may delegate to an employee of the Authority
the powers granted to him under this Law, with the exception of powers
under sections 12(b), 25, 34(b), 43, 46 to 48, 96, 98(b) and (c), 99 and
103(b).
(b) A notice on delegation of powers under this section will be
published in Reshumot.
Objection to
decisions of
Authority
employee
96. A person who considers himself as aggrieved by a decision or act of an
employee of the Authority to whom the Commissioner has delegated
his power pursuant to the provisions of section 95 may object to this in
writing before the Commissioner within the period prescribed by the
Minister.
Decisions of the
competent
authority
97. A decision of the competent authority under this Law will be reasoned
and in writing and will be delivered in the manner prescribed by the
Minister to anyone that was a party to the application or the proceedings
in which the decision was handed down.
Proceedings
before the
Commissioner
98. (a) (1) The Commissioner will publish a notice on any proceeding
conducted before him under sections 12(b), 25, 34, 43 and 46 to
48.
(2) The provisions of paragraph (1) will not derogate from the
power of the competent authority to publish, at his discretion, a
notice on any proceeding being conducted before him under this
Law.
(b) Any person who considers himself as aggrieved by a proceeding
being conducted before the Commissioner as stated in subsection (a)(1)
32
may request from the Commissioner to be joined to the proceeding,
within 30 days of the date that the fact of holding the proceeding was
published under this Law, and the Commissioner may join him as
aforesaid. The Commissioner will give the parties and any other person
likely in his opinion to be aggrieved by the decision, an opportunity to
file their evidence and present their arguments, in writing or verbally,
in the manner, form and on the dates as prescribed by the Minister.
(c) The Commissioner may order payment of reasonable expenses and
instruct any of the parties to pay the expenses, and how they are to be
paid.
(d) An order under subsection (c) may be implemented as if it were a
judgment of a court.
Evidence before
the
Commissioner
99. (a) Subject to the provisions under this Law and unless the
Commissioner instructed otherwise on special grounds to be recorded,
testimony given before the Commissioner will be by affidavit and the
other party will have a right to cross-examine the deponent.
(b) When collecting oral testimony, the Commissioner will have all the
powers of a court with respect to the warning of the witnesses, obtaining
a declaration from them and obligating witnesses to appear before him
and with respect to other related matters, as well as on matters relating
to the giving of testimony.
Extension of
periods 100. (a) The competent authority may, under a request submitted to him and
if he believes there are reasonable grounds for doing so, extend any
period determined under Chapter 4 for the doing of any act before him
or before the Authority, with the exception of the periods determined in
sections 30(b), 40, 41 and 43(a), and in addition to extend the periods
under sections 96 and 98(b), however with respect to section 21 –
(1) he will not extend the period under section 21(1) unless he was
convinced that the design application in Israel was not filed on time
due to reasons over which the applicant and his legal representative
had no control and which could not have been prevented;
(2) he will not extend the period under section 21(2) unless the
competent authority found that no application was filed for
recognition of the date of filing a prior application due to an
innocent mistake, provided however that the design has not yet
been registered.
(b) The competent authority may make the extension of the periods
stated in this section contingent on conditions he deems fit.
33
(c) A request for the extension of the period as stated in this section
may be filed within or after the period; however, if the request was filed
after the expiration of the period, the competent authority will extend it
only on special grounds to be recorded.
Confidentiality 101. A person who received information or a document under this Law in
the course of carrying out his duties or in the course of his employment
will keep such information confidential, not transfer it to any other
person and will not make any use of it except under the provisions of
this Law, and subject to the provisions of any law or under a court order.
Designs Register 102. (a) A register of designs will be kept at the Authority in which the
information required under this Law will be recorded, as well as
additional details that the Commissioner deems fit to record.
(b) The Register will be open for public inspection on the Authority’s
website.
Publication of
information on
the Authority’s
website
103. (a) Information published on the Authority’s website under this Law,
including the Register, will be accessible to the public free of charge.
Such publication on the website will be carried out in such manner to
ensure the credibility, availability and retrieval of the information
published thereon, and output capability.
(b) Notwithstanding the provisions of subsection (a), the Commissioner
may not publish information as stated in the aforesaid subsection, at the
request of anyone who passed on the information to the competent
authority or the Authority under this Law.
(c) To safeguard the information published on the Authority’s website
under this Law, the Authority will use dependable software and
hardware systems providing reasonable protection against penetration,
disruption, disturbance or causing damage to the computer or the
computer material.
(d) In this section, “computer material” and “output” are as defined in
the Computers Law, 5755-1995.7
Safeguarding the
Authority’s
documents and
public inspection
104. (a) All documents in the possession of the Authority relating to the
examination of a design application , the period of the design and the
rights therein, or any other matter that may affect the period of the
design or the rights therein, with the exception of internal
correspondence between the Authority’s employees or categories of
documents determined under section 112(a)(6) will be kept by the
7 Sefer HaChukkim of 5755, page 366.
34
Authority from the date of validity expiration of the design or from the
date the design application was rejected or that the applicant withdrew
from such an application, as the case may be, and until the expiration
of at least seven years from such date or until the expiration of any other
period determined under the aforesaid section.
(b) The documents that must be safeguarded pursuant to the provisions
of subsection (a) will be open for public inspection on the Authority’s
website, with the exception of documents relating to a design
application that has not yet been published under section 22 and
information as stated in section 103(b).
Registration of
rights under a
judgment
105. Where a judgment has been delivered to the Commissioner in which
there is a determination concerning rights in a registered design and no
notice was delivered to the Commissioner concerning the filing of an
appeal on the judgment, the Commissioner will record in the Register
the rights with respect to which it was determined as aforesaid upon the
expiration of the period for filing an appeal, unless determined
otherwise in the judgment.
Right of appeal 106. (a) A person who considers himself as aggrieved by a decision of the
Commissioner that concluded the hearing of the proceeding conducted
before him under this Law, including a decision on an objection under
section 96, may appeal it before the court within 45 days of the date of
handing down the decision.
(b) A person who considers himself as aggrieved by any other decision
of the Commissioner under this Law may appeal it before the court after
having been given permission to do so from the appellate court. The
provisions of the last clause of section 41(b) of the Courts Law
[Consolidated Version], 5744-19848 shall apply, mutatis mutandis, to
the court's discretion to grant a leave to appeal, also the provisions
under section 41(c)(1) and (d) of the aforesaid Law. For this purpose,
“any other decision” means any decision that does not conclude the
hearing proceeding conducted before the Commissioner.
(c) The competent court with respect to an appeal on a decision of the
Commissioner under this Law is the Jerusalem District Court or the Tel
Aviv District Court, at the election of the appellant; however, the
Minister may, by order, prescribe that the power of the District Court
under this Law will also be with other District Courts as he prescribed.
Respondents in
an appeal 107. Where an appeal has been filed under section 106, the respondent in the
appeal will be any person who was a litigant in the proceedings before
8 Sefer HaChukkim of 5744, page 198.
35
the Commissioner, with the exception of the appellant; if there was no
other litigant, the Commissioner will be the respondent in the appeal.
In camera
hearing 108. An appeal on a decision of the Commissioner in an objection submitted
to him under section 96 on a decision concerning the refusal of a design
application under section 30, will be heard in camera if the design
application was not yet published under section 22, unless the court
instructed otherwise.
The
Commissioner’s
hearing on a
design with
respect to which
a proceeding is
held in court
109. (a) Where a design registration application has been filed to the
Commissioner or a request for a hearing concerning a design and the
Commissioner is aware there is a proceeding pending before the court
for infringement of the design with respect to which such application
was filed or due to cancelation of the registration of the design in the
Register, the Commissioner will not hear the application filed to him
except with the leave of the court.
(b) Where the court’s leave has been granted as stated in subsection (a),
the Commissioner shall decide about the application after having given
all the parties in the proceeding pending before the court an opportunity
to present their arguments before him, except in the examination
proceedings of a design application.
(c) Where a proceeding has been commenced in court for infringement
of a design after an application was filed to the Commissioner for the
deletion of registration of the design from the Register or for its
cancelation under section 47 or 48, the Commissioner will continue to
hear the application, unless instructed otherwise by the court on this
matter.
Postponement by
customs 110. (a) A proprietor of a registered design who believes that his right has
been infringed or there is reasonable cause for concern that it has been
infringed, may deliver a written notification to the Customs Director
according to which he is the owner of a right in a registered design, and
to request that he postpone the release of goods which, according to the
assertion of the registered design proprietor are infringing his right in
the design, and to treat them as goods whose import is prohibited under
the Customs Ordinance (hereinafter referred to in this section as the
“notification”).
(b) The notification shall include all the following:
(1) a copy of the record of the design in the Register, as well as a
clear visual description of the registered design enabling the
Customs Director to compare the registered design and the
infringing goods, including photographs, a catalog or any other
36
document enabling the Customs Director to make such
comparison;
(2) sufficient indication of the name of the importer importing the
infringing goods or the container number in which they are
imported;
(3) additional details if they are known to the proprietor of the
registered design, including the name of the ship or the means of
import in which the infringing goods were imported, the date on
which such goods are to arrive in Israel and the number of packages
to be received.
(c) A proprietor of a registered design will furnish the Customs Director
with initial evidence and an independent self-guarantee in an amount
determined by the Customs Director to cover the expense relating to a
postponement or to compensate for any damage incurred by such
postponement, if it becomes apparent that the postponement was not
justified, and also to pay any fee prescribed in this regard under the
Customs Ordinance. For the purpose of this subsection, the furnishing
of any details enumerated in subsections (a) and (b) will be deemed the
furnishing of initial evidence.
(d) The provisions of this section will not apply to infringing goods
imported for personal use.
(e) In this section, the “Customs Director” means the Director, as
defined in the Customs Ordinance.
Application to
the State 111. (a) This Law will also apply to the State, subject to the provisions of
subsection (b).
(b) (1) The provisions of section 12 will also apply, mutatis mutandis,
to a design designed by a State employee.
(2) The provisions of section 13 will also apply, mutatis mutandis,
to a design ordered by a State employee, and the State will be the
first proprietor of the design that was designed according to such
order.
(3) In this subsection, a “State employee” includes a soldier, police
officer and any officer or functionary under statute in any of the
State institutions.
Chapter 11: Implementation and Regulations
37
Implementation
and regulations 112. (a) The Minister is responsible for the implementation of this Law and
he may enact regulations on any matter relating to its implementation,
and inter alia, on the following matters:
(1) arrangements for registration of designs and the classification of
design products ; the list of classifications will be determined, if
possible, pursuant to the Locarno Agreement;
(2) procedures in proceedings under this Law;
(3) the determination of dates for implementation of acts required
under this Law;
(4) applications filed under this Law, including the manner of filing
the application, details to be included therein and the documents to
be attached to it. In the regulations under this paragraph, the
Minister may determine the documents the competent authority
may demand from a person filing a design application, provided
however that such documents are known to the applicant and they
will affect the eligibility of the design for protection as a registered
design;
(5) the fees for applications filed with the Authority or for acts of the
Authority under this Law, including for registration and renewals
of designs and proceedings before the competent authority, and the
methods of updating the fee amounts, dates of updating and dates
of payment of fees; in the regulations under this paragraph the
Minister may prescribe fees for any design included in A design;
regulations under this paragraph will be enacted with the consent
of the Minister of Finance;
(6) categories of documents to which the provisions of section
104(a) will not apply or will apply with the changes as determined,
and also documents and categories of documents to be kept by the
Authority for a period that is different than the one prescribed in
that section;
(7) the method of publication of information that must be published
under this Law on the Authority’s website, and the determination
of additional methods for publication of such information;
(8) the method of filing an objection as stated in section 96.
(b) Regulations under subsection (a) (5) and (7) will be enacted with
the approval of the Economic Affairs Committee.
38
Chapter 12: Indirect Amendments
Amendment of
the Patents and
Designs
Ordinance – no.
10
113. In the Patents and Designs Ordinance9 -
(1) the following will be inserted after section 3A:
“Applying
Ordinance in
respect to
designs:
3B. The provisions under this Ordinance will
apply to a design that prior to the date of
commencement of the Designs Law, 5777-
201710 (referred to in this Ordinance as the
“Designs Law”) satisfied one or more of the
following conditions:
(1) the design was made public;
(2) a design application was filed for in the
Designs Register;
(3) the design was registered in the Designs
Register.”;
(2) In section 33 –
(a) in the margin heading, the word “copyright” should be replaced
by the word “ the design”;
(b) the following will be inserted after subsection (3):
“(3A) If the Commissioner was requested on the relevant date
and in the manner prescribed, before the expiration of the third
period of five years, to extend the date of the design right and
the fee determined was paid, the Commissioner shall extend the
period of the design right for a fourth period of three years from
the date of expiration of the third period; the fee for the
extension of the date of the design right under this subsection
will be equal to the fee determined under the provisions of
subsection (3);
(c) in paragraph (4), instead of the words “and – (3)” will be inserted
the words “up to (3A)”, instead of “or (3)” will be inserted “up to
(3A)” and instead of the words “the first or second” will be inserted
“the first, second or third”;
(3) the following will be inserted after section 37:
9 Laws of Palestine, vol. II, page (Hebrew) 1053, (English) 1076; Sefer HaChukkim of 5768, page 568. 10 Sefer HaChukkim of 5777, page 1176.
39
“Remedies
with respect
to assets
produced in
infringement
of a design right
37A. (a) Upon conclusion of a claim for infringement
of a design right, the court may, after having
considered, inter alia, the severity of the
infringement and the interest of any other person
concerned that is not a party to the claim, instruct
as follows –
(1) the performing of an act with respect to
assets produced in infringement of a right (in
this section, the “infringing assets”) whose
purpose is to prevent damage to the
proprietor of the design right, and including
the transfer of ownership in these assets to
the plaintiff if he so requested, or their
destruction; however, where the court
ordered such transfer of ownership, it may, if
it found that the plaintiff was likely to use the
infringing assets, charge him the payment as
it shall determine;
(2) the performing of an act with assets whose
main or central use was for the manufacture
of infringing assets whose purpose is to
prevent the continued infringement heard by
the court or any other infringement of a
design right.
(b) The provisions of subsection (a) will also
apply with respect to an asset found in the
possession of a person who was not himself in
infringement of such right, all subject to the
provisions of section 34 of the Sale Law, 5728-
196811.”;
(4) Section 55 – repealed.
Amendment of
Customs
Ordinance – No.
27
114. In the Customs Ordinance12, in section 200A(a) –
(1) In the opening section, after the words “or in any other manner” will
be inserted the words “and with respect to a design – by way of receipt
of a notice as stated in section 110 of the Designs Law, 5777-2017 (in
this section, the “Designs Law”), instead of the words “infringement of
11 Sefer HaChukkim of 5728, page 98. 12 Dinei Medinat Yisrael (Nusach Chadash), Vol. 3, page 39; Sefer HaChukkim of 5776, page 283.
40
copyright or trademark” will be inserted the words “infringement of
copyright, trademark or right in a registered design”;
(2) in paragraph (3), instead of the words “the proprietor of the
copyright or trade mark” will be inserted the words “the proprietor of
the copyright, design or trademark” and instead of the concluding part,
beginning with the words “or 69A” will be inserted the words “section
110 of the Designs Law or section 69A of the Trademarks Ordinance,
where notice was given”.
Amendment of
the Income Tax
Ordinance – No.
243
115. In the Income Tax Ordinance13, in sections 2(9), 8(b) and 125, wherever
the words appear “patent or design”, will be inserted the words “patent,
design (old version) design”.
Amendment of
the Purchase Tax
(Goods and
Services) Law –
No. 24
116. In the Purchase Tax (Goods and Services) Law, 5712-195214, in section
1, in the definition of “service” in paragraph (3), instead of the words
“design rights” will be inserted the words “rights in a design or a
design”, instead of “for use thereof” will be inserted the words “for use
thereof” and instead of “design right” will be inserted “rights in a design
or design”.
Amendment of
the Chamber of
Advocates Law
– No. 40
117. In the Israel Bar Association Law, 5721-196115, in section 20(2) after
the words “the Registrar of Patents and Designs” will be inserted the
words “the Commissioner, as defined in the Designs Law, 5777-201716;
Amendment of
the Appellations
of Origin and
Geographical
Indications
(Protection) Law
– No. 5
118. In the Appellations of Origin and Geographical Indications (Protection)
Law, 5725-196517 (hereinafter, the Appellations of Origin (Protection)
Law”) –
(1) in section 21A, instead of the words “under sections 22 and 23” will
be inserted the words “under sections 22, 23 and 23A”;
(2) in section 21B(a), instead of the words “under sections 22 and 23”
will be inserted the words “under sections 22, 23 and 23A”;
(3) the following will be inserted after section 23:
Remedies
with respect
to assets
produced in
infringement
23A. (a) Upon conclusion of hearing of an action for
infringement of a right in a registered
appellation of origin, the court may, after
having considered, inter alia, the severity of the
13 Dinei Medinat Yisrael (Nusach Chadash), Vol. 6, page 120; Sefer HaChukkim of 5777, page 1092. 14 Sefer Ha-Chukkim of 5712, page 344; of 5776, page 286. 15 Sefer Ha-Chukkim of 5721, page 178; of 5776, page 1115. 16 Sefer Ha-Chukkim of 5777, page 1176. 17 Sefer Ha-Chukkim of 5725, page 186; of 5772, page 57.
41
of a right in a
registered
appellation of
origin
infringement and the interest of any other
person concerned that is not a party to the
action, instruct as follows –
(1) the performing of an act with respect to
assets produced in infringement of a right
(in this section, the “infringing assets”)
whose purpose is to prevent damage to the
proprietor of the right, and including the
transfer of ownership in these assets to the
plaintiff if he so requested, or their
destruction; however, where the court
ordered such transfer of ownership, it may,
if it found that the plaintiff was likely to use
the infringing assets, charge him the
payment as it shall determine;
(2) the performing of an act with assets
whose main or central use was for the
manufacture of infringing assets whose
purpose is to prevent the continued
infringement heard by the court or any other
infringement of a right.
(b) The provisions of subsection (a) will also
apply with respect to an asset found in the
possession of a person who was not himself in
infringement of such right, all subject to the
provisions of section 34 of the Sale Law, 5728-
196818.”
Amendment of
Patents Law –
No. 12
119. In the Patents Law, 5727-196719 -
(1) in section 143(a), instead of the word “design” will be inserted the
words “the design, the designs”;
(2) in section 154(a), instead of the word “for designs” will be inserted
“for design, for designs”;
(3) in section 182, subsection (b) – repealed.
Amendment of
Trademarks 120. In the Trademarks Ordinance [New Version], 5732-197220 -
18 Sefer Ha-Chukkim of 5728, page 98. 19 Sefer Ha-Chukkim of 5727, page 148; of 5774, page 274. 20 Dinei Medinat Yisrael (Nusach Chadash), Vol. 26, page 511; Sefer Ha-Chukkim of 5770, page 562.
42
Ordinance – No.
8 (1) in section 11(4), instead of the words “registered design” will be
inserted the words “registered design”, “design”, “registered design”,
“unregistered design”;
(2) in section 69A(b) at the opening part of the section, instead of the
words “a copy of the trademark registration certificate” will be inserted
the words “a copy of the trademark registration in the Register”.
Amendment of
the Criminal
Procedure Law –
No. 80
121. In the Criminal Procedure Law [Consolidated Version], 5742-198221,
in the First Schedule A, in Part A, item (66) – to be deleted.
Amendment of
Companies
Ordinance – No.
20
122. In the Companies Ordinance [New Version], 5743-198322, in section
178(a)(6) in each place after the word “patents” will be inserted the
words “design or designs”, and instead of the words “rights of
copyright” will be inserted the word “copyright”.
Amendment of
the Courts Law –
No. 90
123. In the Courts Law [Consolidated Version], 5744-198423, in section
40(4), after sub-paragraph (i) will be inserted the following:
“(j) The Designs Law, 5777-201724;
Amendment of
the Restrictive
Trade Practices
Law – No. 19
124. In the Restrictive Trade Practices Law, 5748-198825, in section 3(2),
after the word “design” will be inserted the word “design”.
Amendment of
the Integrated
Circuits
(Protection) Law
125. In the law for the protection of the Integrated Circuits (Protection) Law,
5760-199926 (hereinafter, the “Integrated Circuits (Protection) Law”),
the following will be inserted after section 12:
“Remedies
with respect
to assets
produced in
infringement
of exclusive
right in a lay-
out plan
(topography)
12A. (a) Upon conclusion of a hearing in an action
for infringement of an exclusive right in a
layout plan (topography), the court may, after
having considered, inter alia, the severity of the
infringement and the interest of any other
person concerned that is not a party to the
action, instruct as follows –
(1) the performing of an act with respect to
assets produced in infringement of a right
(in this section, the “infringing assets”)
whose purpose is to prevent damage to the
21 Sefer Ha-Chukkim of 5742, page 43; of 5777, page 921. 22 Dinei Medinat Yisrael (Nusach Chadash), Vol. 37, page 761; Sefer Ha-Chukkim of 5776, page 626. 23 Sefer Ha-Chukkim of 5744, page 198; of 5777, page 695. 24 Sefer Ha-Chukkim of 5777, page 1176. 25 Sefer Ha-Chukkim of 5748, page 128; of 5776, page 1262. 26 Sefer Ha-Chukkim of 5760, page 42.
43
proprietor of the right in the layout plan
(topography), and including the transfer of
ownership in these assets to the plaintiff if
he so requested, or their destruction;
however, where the court ordered such
transfer of ownership, it may, if it found that
the plaintiff was likely to use the infringing
assets, charge him the payment as it shall
determine;
(2) the performing of an act with assets
whose main or central use was for the
manufacture of infringing assets whose
purpose is to prevent the continued
infringement heard by the court or any other
infringement of a right in a lay-out plan
(topography).
(b) The provisions of subsection (a) will also
apply with respect to an asset found in the
possession of a person who was not himself in
infringement of such right, all subject to the
provisions of section 34 of the Sale Law, 5728-
196827.”
Amendment of
the Prohibition
on Money
Laundering Law
– No. 23
126. In the Prohibition on Money Laundering Law, 5760-2000 28, in the First
Schedule, in item (16), the word “design” and the words “the Patents
and Design Ordinance” shall be deleted.
Amendment of
the Copyright
Law – No. 4
127. In the Copyright Law, 5768-200729 (hereinafter, the “Copyright Law”)
–
(1) In section 1 –
(a) In the definition of “creative work”, the following words will be
inserted at the end “and including a typeface”;
(b) In the definition ““publication” of a work”, the following words
will be inserted at the end “that is not a typeface”;
(2) In section 7 –
27 Sefer Ha-Chukkim of 5728, page 98. 28 Sefer Ha-Chukkim of 5760, page 293; of 5777, page 1038. 29 Sefer Ha-Chukkim of 5768, page 38; of 5777, page 504.
44
(a) In the margin heading after the word “design” will be inserted
the word “designs”;
(b) After the words “the Patents and Design Ordinance” will be
inserted the words “or in a design as defined in the Designs
Ordinance, 5777-201730”, after the word “design” will be inserted
the words “or the design” and after the word “design” will be
inserted the words “or design”;
(3) In section 11(6) after the words “artistic work” will be inserted the
words “that is not a typeface”;
(4) After section 28A will be inserted the following:
“Permitted
use of
typeface
28B. Use of a typeface by data entry, word
processing, typesetting, printing or typing, as
well as keeping a product for such use – are
permitted even if carried out while using a
computer program or other product infringing
the right in the typeface.”;
(5) The following will be inserted after section 41:
Period of
copyright in
typeface
41A. The copyright in a typeface will be for a period
of seventy years from the date of publication
of the typeface.”;
(6) in section 45(a), the following words will be inserted at the end
“however, with respect to a work that is a typeface, the right as stated
in section 46(1) will not apply”;
(7) in section 47, its provisions will be marked “(a)” and thereafter the
following will be inserted:
“(b) When examining an assertion of infringement as stated in
subsection (a) with respect to a work which is a typeface, inter alia,
the variety of options existing for a design of letters, numbers and
other language signs will be taken into account;”;
(8) in section 48, its provisions will be marked “(a)” and thereafter the
following will be inserted:
“(b) The provisions of subsection (a) will apply, mutatis mutandis,
to a copy of a work, even if made pursuant to the provisions of
30 Sefer Ha-Chukkim of 5777, page 1176.
45
section 28B, provided however that it was made without the
permission of the owner of the copyright in the typeface.”;
(9) in section 50(b), the following words will be inserted at the end “and
with respect to a typeface – even if the act was made pursuant to the
provisions of section 28B”;
(10) in section 60, the following will be inserted instead of subsection
(a):
“(a) Upon conclusion of a hearing in an action for infringement of
copyright, the court may, after having taken into consideration, inter
alia, the severity of the infringement and the interest of any other person
concerned that is not a party to the action, instruct as follows –
(1) the doing of an act with respect to infringing copies the purpose
of which is to prevent any damage to the owner of the copyright,
including the transfer of ownership in those copies to the plaintiff if
he so requested, or their destruction; however, where the court has
ordered such transfer of ownership, it may, if it found that the
plaintiff is likely to use the infringing copies, charge him the
payment, as it shall determine;
(2) the doing of an act in assets whose main and central use was
for the manufacture of the infringing copies whose purpose is to
prevent the continued infringement of copyright that the court heard
or another infringement of copyright.”
Chapter 13: Commencement, Application and Transitional Provisions
Commencement 128. (a) This Law shall come into effect on the date of its publication
(hereinafter referred to in this Chapter as the “date of commencement”).
(b) Notwithstanding the provisions of subsection (a) –
(1) the commencement of sections 33 and 37A of the Patents and
Designs Ordinance and the repeal of section 55 of the aforesaid
Ordinance, sections 21A, 21B(a) and 23A of the Appellations of
Origin (Protection) Law and section 12A of the Integrated Circuits
(Protection) Law, as drafted in this Law, is on the date of
publication of this Law (hereinafter referred to in this Chapter as
the “date of publication”);
(2) the commencement of Chapter 8 is three months after the date
of accession of the State of Israel as a party to the Hague
Agreement, provided however that such date does not precede the
46
date of commencement. The Minister will publish in Reshumot a
notice on such date of accession and the Authority will publish
such notice on its website. In this paragraph, the “Hague
Agreement” is as defined in section 79.
Application 129. (a) The provisions of section 33 of the Patents and Designs Ordinance,
as drafted in section 113(2) of this Law, will apply to a design that on
the eve of the date of publication satisfied one of the following
conditions:
(1) it is a registered design under the provisions of the Ordinance
and the period of the design right has not elapsed in its regard as
stated in section 33(3) of the Ordinance;
(2) the period of the design right in its regard has expired due to
non-filing of an extension request pursuant to the provisions of
section 33(3) of the Ordinance, and on the eve of the date of
publication a request was filed to extend the date of the design
right pursuant to the provisions of section 33(4) of the Ordinance.
(b) The provisions of the sections specified below, as drafted in this
Law, will not apply to the infringement of such a right in those sections
that was made on the eve of the date of publication:
(1) section 37A of the Patents and Designs Ordinance;
(2) section 23A of the Appellations of Origin (Protection) Law;
(3) section 12A of the Integrated Circuits (Protection) Law;
(4) section 60(a) of the Copyright Law.
Application of
the Designs Regulations with
respect to
designs
130. (a) The Designs Regulations will apply, mutatis mutandis, to
applications for registration of a design and to a registered design under
the provisions of this Law, and they will be deemed to have been
enacted under this Law in those matters respecting which power was
granted to enact regulations hereunder, as long as regulations have not
entered into effect in their place under this Law or until the expiration
of two years after the date of publication, according to the earlier of the
two, provided however that all the following conditions are satisfied:
(1) the Designs Regulations were not repealed under law;
(2) no provisions were determined in this Law in those matters
regulated in the Designs Regulations;
47
(3) the Designs Regulations are not contrary to the provisions of
this Law.
(b) Without derogating from the generality of the foregoing in
subsection (a) (2) and (3), Regulations 4, 5, 12, 14 to 16, 18, 29, 34 to
36, 40 to 46, 48 to 54, 57 to 58, 70(2) and 71 of the Designs Regulations
and the Second Schedule to the aforesaid Regulations – will not apply
with respect to designs as stated in subsection (a).
Transitional
provisions 131. (a) Notwithstanding the provisions of section 35 of the Patents and
Designs Ordinance, the competent authority will publish on the
Authority’s website a visual description of each design registered in the
Designs Register under the provisions of the aforesaid Ordinance (in
this section, the “Designs Register”), as registered in such Register, and
also the name of the proprietor of the design on the dates as specified
below:
(1) with respect to designs registered in the Designs Register until
the date of commencement – up to 30 days after the date of
commencement;
(2) with respect to designs registered in the Designs Register after
the date of commencement – upon their registration in the Designs
Register.
(b) The Register and the Designs Register will be combined and will be
displayed together on the Authority’s website, provided however that
with respect to any record of a design or design the Authority will note
whether it was made pursuant to the provisions of this Law or pursuant
to the provisions under the Patents Ordinance.
(c) Anyone making any proper preparations to perform any of the acts
stated in section 37(1)(a) or (b) of the Patents and Designs Ordinance
concerning a design that but for the provisions of section 33(3A) of the
aforesaid Ordinance, as drafted in this Law, the third period of design
right therein as stated in section 33(3) of the Ordinance would have
lapsed at the latest upon the expiration of two years after the date of
publication of this Law, is entitled to perform any of the acts as stated
in section 37(1)(a) or (b) of the Patents and Designs Ordinance, for the
purpose of his business only, even if the period of the design right was
extended as stated in the aforesaid section 33(3A).
(d) (1) A request for the extension of the date of a design right under
the provisions of section 33(3A) of the Patents and Designs
Ordinance, as drafted in this Law, will not be filed except upon
48
the expiration of three months after the date of publication and
henceforth.
(2) Notwithstanding the provisions of paragraph (1), with respect
to a design whose third period of design right therein as stated in
section 33(3) of the Patents and Designs Ordinance has expired
within the three months stated in paragraph (1), the proprietor of
the design may file a request for the extension of the date of the
design right pursuant to the provisions of section 33(4) of the
Patents and Designs Ordinance, as drafted in this Law, and he will
be exempt from payment of an additional fee under this section.
Such request will be filed in the period which commenced upon
the expiration of three months after the date of publication and
ended upon the expiration of six months after the date of
publication.
Benjamin Netanyahu Prime Minister
Ayelet Shaked Minister of Justice
Reuven Rivlin President of the State
Yuli-Yoel Edelstein Speaker of the Knesset
DISCLAIMER: For you attention please note that The English version is a translation of the
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