Enforcement

Grounds for a claim

What are the key causes of action?

The owner of an unregistered design has the exclusive right to prevent any person from producing for commercial use a product which is an identical copy of the design, or a product which provides the informed user an overall impression that is not different from the overall impression given by the design product.

Unregistered design infringement is established by the following acts:

  • sale or lease (including a bid or a put-up for sale or lease) in a commercial manner;
  • possession for the purpose of sale or lease; and
  • commercial distribution or import into Israel other than for personal use, provided that at the time the act was performed the alleged infringer knew or should have known that the product was an infringing product.

The owner of a registered design has the exclusive right to perform any of the acts listed below with respect to the registered design and with respect to any other design creating the same overall impression on the informed user:

  • production, sale or lease, including a bid or a put-up for sale or lease, of a registered design product, in a commercial manner;
  • distribution on a commercial scale or import into Israel other than for personal use (excluding parallel import, which is allowed); and
  • holding a registered design product for the purpose of performing any of the acts listed above.

A person exploiting a registered design, alone or through another party, after the publication date of the application for registration and without the registered design owner’s permission, infringes the registered design.

Procedures

What enforcement procedures are available?

The plaintiff is entitled to an injunction order in a design infringement action, unless the court finds reasons justifying refraining from issuing such an order. In addition, the court may award the plaintiff compensation without proof of damages of up to 100,000 shekels. In determining such compensation, the court may take the following, among others, into consideration:

  • scope of infringement;
  • severity of infringement;
  • actual damages caused to the plaintiff;
  • profit estimated by the court that has been accrued by the infringer; and
  • the infringer’s behaviour and good will, as well as his or her relationship with the design owner, while taking into account the scope of available possibilities for designs in the field of the design product.
Remedies

What remedies are available?

The court may require the defendant to provide an account of the details of the infringement. The court may also order:

  • the delivery up of the infringing products or their destruction; and
  • the performance of an act with respect to means of manufacture of infringing products to prevent future infringement.

In an action due to design infringement, the infringer is not liable to pay compensation if at the time of the infringement infringer did not know or did not have to know that rights existed in the design. However, it is presumed that the infringer knew that there were rights in the design if the design was registered or if application to register it was published and, with respect to an unregistered design, if the design was duly marked.

A person commercially exploiting a registered design through a business, by means of manufacture or import of a design product identical to a registered design and without the registered design owner’s permission, is liable to a fine of up to 226,000 shekels (if such infringer is a corporation, the fine will be doubled).

Under certain conditions, a registered design owner may ask the customs director to delay the release of goods that are suspected to infringe a registered design and to treat them as goods that are prohibited from import by the Customs Ordinance. Such provisions at Customs do not pertain to goods imported for private use.

Enforcement time frame

What are the time frames for the resolution of enforcement actions for registered and unregistered rights?

Unregistered rights are relatively new, and as a result little background has yet to build up. As civil matters at court go, such a matter may take anywhere between 18 and 40 months at first instance. The enforcement of registered rights should also take place in the same sort of time frame. In both cases, interim relief may be granted within several weeks or a few months.   

Recent cases

What key cases from the past 18 months should rights holders be aware of?

In Dialit Ltd v A Harrar (June 2019, 8191/16), an assertion of a registered design right (registered under the Patents and Designs Law 1924) was rejected by the Supreme Court on grounds of a specific analysis of specific features of the allegedly infringing products over the general impression of the overall get-up.

In Hamat Design and Marketing Ltd v Top Bet Ltd (July 2019, 42894-05-19), the plaintiff’s claims of unregistered design rights under the new Designs Law were rejected by the District Court. Although denied, the court gave certain criteria and application for the new type of protection under the Designs Law.

In Furniture Industries Lavi-Agricultural Cooperative Society Ltd v Ben Lulu (October 2019, 50783-10-18)), the District Court recognised that the allegedly infringing product was indeed identical and furthermore the actual act of infringement.