What is Design Infringement?

Copying, imitating, counterfeiting, importing, selling, renting, offering for sale or any other use made of the design without permission and for commercial purposes, constitutes an infringement of the design and a punishable criminal offense. In case of infringement of a design, the owner of the design can submit a claim for an injunction against the infringer of the design to court, as well as a claim for financial compensation for the economic damage caused to him as a result of the infringement.

Infringement of a design in Israel
Israeli law provides protection against infringement both with regard to industrial designs (intended for production in quantities of over 50 units) that are registered and with regard to industrial designs that are not registered. Regarding registered designs, the protection is for a period of up to 15 years, subject to renewal fees. As for designs that are not registered, protection is granted for 3 years, for designs that are new in Israel and distributed in a commercial way, within 6 months from the date of the first publication of the design.
Design infringement refers to both the designs of physical products such as pieces of furniture, clothing, jewelry, work tools, products for home use, and more, and to the designs of digital products, including icons, provided that the designs are internationally innovative and of a unique nature.

What can be done against design infringement?

In the case of infringement of designs in Israel, the infringer can be sued and the court can order:

• Issuance of an injunction to stop the infringement of the design and the use of the infringing products
• Compensation, up to the ceiling set by law, without the need to prove damage
• Compensation above the ceiling – upon proof of damage
• Detention of the infringing products at customs
• Destruction of the infringing products or their seizure and transfer to another ownership
• Destruction of the tools used to manufacture the infringing products
• Financial fines for infringers of the design

Injunction against design infringement
The claim for an injunction against the infringement of models in Israel is submitted to the district court, and together with it, a request for a quick temporary injunction can be submitted in order to stop the infringement, within a few days.
In addition, in order to prevent or stop the use of the infringing products and to prevent their arrival on the market, a request for a search warrant and a seizure warrant can be added to the request for a restraining order. After the infringing products are seized, they will usually be handed over to a trustee or receiver appointed by the court, and they can be used as legal evidence.

Financial compensation against design infringement
At the same time as the injunctions designed to reduce the damage from the infringement of the design, it is possible to file a lawsuit and demand compensation from the design infringer based on the amount of income he had. For the purpose of claiming damages up to 100,000, there is no obligation to prove damage and if it is possible to prove damage in a higher amount, it is possible to claim damages in the amount of the damages.

How is design infringement determined in Israel?
Design infringement in Israel is determined based on two main legal tests:
The eye test – in which the judge checks whether the product imitates or copies a registered design based on the consumer’s point of view, or whether the design of the product misleads or confuses the consumer, even if it is not the same or not even very similar to the registered design.
The novelty test – according to this test, the court checks whether the registered design is indeed an innovation in its field. The more design-wise the re-registered design is, the broader the protection granted to its owner will be.
Due to the complexity of proving the infringement, including the need to litigate with the other party and even sometimes to use the professional opinion of an expert in the field of content in which the design deals, it is highly recommended to use the representation of an intellectual property lawyer, who has experience in claims of infringement of designs.

As a leading firm of lawyers and patent attorneys in the field of intellectual property, the Mark Friedman team has great expertise and proficiency in design infringement litigation, along with rich experience of over 30 years in representing many clients in design and design infringement claims, including requests for temporary relief and infringement compensation, defense Against design infringement claims, mediation and arbitration procedures related to design infringement, as well as cancellation of design registrations and protection of existing design registrations before the Registrar of Patents and Designs.

*The aforementioned in this article and on the website in general should not be considered as legal advice and the things written in it should not be considered as a substitute for individual legal advice, but a personal opinion and/or a general explanation only. Of course, you should not rely on and/or act in accordance with the above without individual legal advice from an attorney

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