A cease-and-desist letter or lawsuit alleging industrial design infringement in Israel does not establish that the accused product violates a valid right. The claimant’s registered images may not cover the disputed appearance; the overall impression of the accused product may be sufficiently different; or the registration may be vulnerable to an invalidity challenge. For companies manufacturing abroad or distributing products into Israel, the response should begin with the particular Israeli right and the acts alleged against each defendant.
Different rules apply to registered designs under the Israeli Designs Law, 5777-2017, qualifying unregistered designs under that Law and historical designs subject to the former Patents and Designs Ordinance. Identifying the correct regime determines the available defenses, relevant evidence, legal effect of registration and potential liability for damages.
Non-Infringement: Does the Accused Product Create a Different Overall Impression?
Under Section 37 of the Designs Law, protection for a registered design extends beyond a visually identical article to a design that does not produce a different overall impression on an informed user. Substituting a color, altering a small dimension or adding a minor component does not necessarily avoid infringement if the protected overall appearance remains effectively unchanged.
The defense starts with the complete visual representations in the Israeli registration, including all relevant views, drawings, photographs and disclaimers. A commercial photograph of the claimant’s current product may include features never claimed or may differ from the registered version. Broken lines and excluded portions must be interpreted in the context of the registered materials.
Under Section 37(b), the range of design options available in the product sector must be considered. A close field of existing designs may make particular differences more significant than they would appear in a field with ample design freedom. The question is visual impression, not whether consumers believe the products originate from the same business.
For the evidentiary and analytical method, see Proving Design Infringement in Israel: Overall Impression and the Informed User.
Did the Defendant Perform a Prohibited Commercial Act?
Even relevant visual similarity does not establish liability against every business in a supply chain. Sections 37 and 66 address commercial exploitation of registered designs, including specified acts of manufacture, sale, offering for sale, commercial distribution, importation other than for personal use and possession for particular commercial purposes.
Foreign manufacturers and Israeli retailers can occupy different positions. A company named in a lawsuit may have produced the product, acquired it from a supplier, offered it online, arranged importation or had no involvement in the transaction alleged.
The evidence should identify the particular products, dates, quantities, seller, manufacturer and importer. A photograph of a similar product displayed somewhere on an e-commerce platform does not automatically prove that the named defendant imported or sold it during the relevant period. Section 37 contains an exclusion relevant to certain goods manufactured abroad with the design proprietor’s authorization, which must be assessed on the facts rather than ignored in disputes involving parallel trade.
Challenging Validity During an Infringement Action Under Section 70
Registration confers a prima facie evidentiary presumption under Section 31(c), but it is not immune from attack. Section 70(a) provides that a ground supporting cancellation is a defense to infringement. Where the court accepts the defense, it must address cancellation or correction of the registration as the Law directs.
A validity defense is distinct from contesting similarity. It asserts that the right itself was ineligible for registration, was filed by someone without the required title or was affected by another statutory ground.
Section 48 provides the main cancellation grounds, including lack of eligibility, defective ownership and conflicting applications subject to the statutory priority rule. A company facing a claim can assess whether invalidity should be argued as a defense in court or whether a separate cancellation application before the Registrar of Designs is appropriate.
The administrative proceeding has its own pleading, evidence and hearing requirements. See Cancellation of a Registered Design in Israel.
Earlier Disclosures, Lack of Novelty and Lack of Individual Character
Sections 3, 6 and 7 require a registered design to be new and have individual character. Novelty is defeated by an identical design or one differing only in immaterial details made public before the relevant date. Individual character turns on a distinct overall impression on the informed user.
A bare claim that the product looks “standard” or “commonplace” does not prove invalidity. Dated catalogues, earlier registrations, archived manufacturers’ websites, prior product listings, technical publications and trade-show material can be relevant if they establish precisely what was publicly available and when.
Evidence should make a reliable visual comparison with the Israeli registration. An undated image or an unproven assertion that a product existed earlier may carry limited weight.
Section 9 protects certain qualifying proprietor-derived disclosures within the statutory 12-month grace period. A defendant should identify the source and timing of the publication rather than assume every pre-filing appearance destroys novelty.
Who Bears the Burden of Proving Invalidity?
In Oren Yoram Packaging Ltd. v. Shkolnik H.Y. Ltd., Israeli Supreme Court, Civil Appeal 8951/10 (2 November 2014), the Supreme Court explained that the party alleging ineligibility bears the burden of proving it. The judgment involved collateral invalidity of a registered design under the former Patents and Designs Ordinance. The court found that an error in the lower court’s allocation of the burden did not alter the outcome given the underlying evidence.
For designs registered under the 2017 Law, the present statutory framework is Sections 31(c), 48 and 70. A defendant should not mistake the right to raise invalidity for a shifting of the initial evidentiary burden to the claimant in every respect.
Functional Features and Exclusions from Design Protection
Section 10 excludes specified visual characteristics dictated solely by technical function, and particular shapes and dimensions necessary for interconnection or integration of products. This prevents design protection from becoming an exclusive right in an engineering solution as such.
A product’s utility does not make its entire appearance ineligible. The defense should identify the specific contested feature and explain the design choices, if any, that were available. Engineering drawings, patent specifications and examples of alternative shapes may be useful.
In S.H.L.–Alubin Ltd. v. Extal Ltd., Haifa District Court, Civil Case 21740-03-14 (29 December 2015), a registered design for an aluminum profile was invalidated under the former legal regime where the relevant feature served drainage and wind-resistance functions. Although the statutory basis differed, the case illustrates the need to examine why the product has its particular appearance, not simply label an entire industrial article “functional”.
Responding to an Unregistered Design Infringement Claim
For an unregistered design, the rights holder lacks the prima facie validity associated with registration. It must establish novelty and individual character and the additional requirement of commercial offering or public distribution in Israel within six months of the relevant date under Section 4. Protection lasts three years from that date under Section 65.
Section 61 protects against commercial manufacture by copying a qualifying unregistered design. A defendant with evidence of independent creation may therefore have a material defense even if the two products resemble one another. Records of dated sketches, prototype development and supplier work can help establish the actual origin of the appearance.
Where a retailer, distributor or importer is sued under Section 68, the rights holder must also establish the required knowledge of infringement. It matters whether the goods originated from an authorized producer and what information the defendant received before or during distribution.
Section 70(b) permits ineligibility to be raised in defense. Absence of an IL-URD marking is not itself a complete defense, but proper marking can affect evidentiary presumptions under Section 69 and the question of damages under Section 78.
These differences are considered in Unregistered Design Infringement in Israel.
Innocent Infringement, Good Faith and Monetary Liability
Section 78 provides that an infringer who did not know and had no reason to know, at the time of infringement, that design rights existed will not be ordered to pay damages under the statutory provision. Knowledge is presumed in the circumstances prescribed by the Law, including registration or, for unregistered designs, qualifying marking or publication of an application.
This defense relates to damages, not necessarily whether the conduct amounts to infringement. An injunction preventing future infringement may still be available. Likewise, good faith can be relevant to the amount of statutory damages under Section 75(b), but does not replace proof that the claimed right or prohibited act is absent.
It is important to separate an assertion that a seller was unaware of the proprietor’s identity from the question whether the seller knew or should have known that rights existed in the design. For legacy designs under the former Ordinance, the applicable old provisions must be examined independently.
Expiry, Restoration and the Right to Continue Exploitation
Registered design protection under the Designs Law is time-limited under Section 39 and subject to applicable renewal fees. When defending a claim, the rights history should be checked for the period during which the disputed acts occurred, not merely the register’s status on the date of the lawsuit.
Section 44 protects a party who began exploiting a lapsed design in Israel after public notice of expiry and before notice of its restoration, or made substantial preparations to do so. Subject to the statutory conditions, such a party may continue exploiting the design for its own business even after restoration.
This defense requires documentary evidence of the relevant publication dates and the actual commencement of exploitation or preparations. A later restoration does not make the timing of the defendant’s earlier conduct irrelevant.
Ownership, Assignments, Licences and Standing
Sections 11–17 regulate initial ownership, employee and commissioned designs, transfers and licences. Section 71 addresses who may bring a design infringement action, including the proprietor and, subject to statutory conditions, an exclusive licensee.
A defendant should examine the chain of title, any relevant commissioned-design agreement and the register entries concerning transfers and exclusive rights. Not every participant in the design’s development is a person entitled to sue, and not every administrative error in a title record automatically establishes a ground for cancellation.
A defective filing by a non-owner under Section 48(a)(2) should be distinguished from an otherwise valid transfer of rights that has not yet been reflected in the register. The legal consequences depend on the statutory provisions and documentary record.
Can a Company Obtain a Declaration of Non-Infringement Before Entering Israel?
Section 72 permits a party intending to perform acts described in Section 37(a) or Section 61 to request a judicial declaration that the proposed acts do not infringe a design. This can be relevant to a foreign manufacturer or importer considering a launch in Israel where a specific registered or unregistered design presents a credible obstacle.
Section 72(b) makes clear that the declaration does not itself determine the design’s validity. A declaration of non-infringement therefore serves a different purpose from cancellation of a registered design. The appropriate proceeding depends on the intended commercial activity and the legal dispute.
Preparing Evidence and Responding to Interim Injunctions
For registered designs, obtain the full visual representation and registration history, preserve a physical or reliably documented sample of the accused product and identify the acts actually attributed to the defendant. Collect dated earlier designs, records of independent development, supplier contracts, procurement and import documentation where relevant.
For unregistered designs, add evidence concerning first disclosure, the six-month Israeli market requirement, copying and the knowledge of retailers or importers. In a preliminary injunction application, the response may need to address prima facie validity and infringement alongside urgency, balance of convenience and the consequences of shutting down business activities.
When damages are claimed, sales volumes, costs and the relationship between the protected appearance and product demand become material. A defendant should not assume that all sales revenue represents the claimant’s loss or a recoverable gain.
Legacy Registered Designs Under Israel’s Former Ordinance
For designs registered under the Patents and Designs Ordinance, the governing regime and transitional provisions must be identified before relying on the new statutory defenses. Oren Yoram v. Shkolnik and R. Sovcarono Ltd. v. Alan Or Jewelry Import and Export Ltd., Tel Aviv District Court, Civil Case 1673/05 (16 February 2012), illustrate collateral validity challenges under the earlier law, including reliance on disclosures predating registration.
The older eye-test decisions, rules of validity and available remedies should not be applied automatically to a design governed by the 2017 statute. For foreign defendants, the first practical step is to identify the specific Israeli registration and the correct legal regime, then compare its protected representations to the accused product.
For Israeli proceedings and defense representation see Design Litigation in Israel, and the current statute in the Israel Patent Office’s English translation of the Designs Law.
