The new Design Law, which came into force this week, provides greater clarity and certainty regarding the rights of design owners in the products they have created, and extends the protections afforded to designs and the range of remedies they are entitled to, in the case of infringement. It is important that design consumers be aware of the new law and the sanctions it imposes on them in cases of infringement.
News for all those engaged in the fields of industrial design, technological design, fashion design, jewelry design, etc. – on August 7, 2018, the Designs Law 5777- 2017 came into force, replacing the old legislation from 1924. Alongside the expansion of protections granted in cases of infringement, it is important and appropriate for, on the other hand, the consumers of these designs, who may be private individuals or companies using services from different designers, to be aware of design owner rights and expected exposures in cases of infringement. These exposures range from civil proceedings and monetary damages, to criminal proceedings, including the imposition of liability on officers in respect of infringement violations committed by a corporation or its employees.
What constitutes a design that is eligible for protection? In the past, only tangible products could benefit from protection (furniture systems, fashion items, etc.), provided that the design was registered, and had a maximum validity of only 15 years.
The new law has adopted a modern and relevant approach, providing protection for the first time for intangible designs as well as for unregistered designs. For example, unlike the past, graphic symbols (icons) and screen displays would be eligible for protection. In this context, the Design Law also led to the regulation of the legal status regarding font design. In the past, there was a lack of clarity regarding the protection of the various font designs. The new Design Law has now indirectly amended the Copyright Law, such that from now on fonts are protected by it as artistic creations.
According to the Design Law, “design” is defined as the visual appearance of the product or part of it, consisting of at least one visual characteristic, including a contour, color, shape, decoration, texture, or the material from which it is made. In addition, the law requires that the design be novel (meaning, not previously published in Israel or outside of it) and of an original nature (in the sense of design characteristics in relation to previous product / design characteristics).
The new Design Law extends the protection period for registered designs from 15 to 25 years from the filing date, and regarding unregistered designs, protection is provided for 3 years from the date on which the design was first published (subject to payment of fees).
The new law affords design owners exclusive rights in their protected design (and in any design which creates a similar general impression to a knowledgeable user) to effect, inter alia, any of the following: production, sale, rental, all commercially. Any such use without the permission of the design owner constitutes an infringement.
Significantly, the law introduced another innovation, namely the possibility of receiving monetary compensation without proof of actual damages – as in cases of infringement it is often difficult to provide proof of financial damage. The new law states that a plaintiff can now be awarded statutory compensation of up to NIS 100,000 per each act of infringement, at the discretion of the court. When determining the amount of the compensation, the court will take into consideration inter alia, the characteristics of the defendant’s activity, the nature of the relationship between the plaintiff and the defendant, the profit that the defendant gained as a result of the infringement and bona fide of the defendant.
In addition, and in the cases enumerated in the law, infringement can also constitute a criminal offense, which may also find officers of corporations liable. The Law imposes on corporate officers and directors the duty to supervise and to do as much as possible to prevent criminal offenses by their corporation or any of its employees. It is important to note that the Law becomes more stringent and reverses the burden of proof, that is, in the event that such an offense has been committed, the presumption is that the officer violated his/her duty, unless proven otherwise.
In addition, the new law gives registered design owner the option to request that Customs detain the release of goods suspected of infringing upon its design rights.
This newsletter is provided for informational purposes only, is general in nature, does not constitute a legal opinion or legal advice and should not be relied on as such. If you are seeking legal advice, it is essential to review the specific facts of each case in detail with a qualified lawyer.
The review was written by Adv. Gali Opinsky, partner and head of the Intellectual Property practice