Intellectual Property Highlights

Author:Dr. Ilan Cohn
Profession:Reinhold Cohn & Partners
 
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In this article we review recent judgement of relative importance, as well as certain noteworthy statutory amendments. These include:

Trademarks - the new service classes (43-45) come into effect on January 1, 2002

Designs - an ornamental feature that may be applied to a number of objects, may be protected per se with the need to apply for registration of the different objects

Filing of patent applications - continued to increase in 2000

Contributory infringement introduced into the law by a Supreme Court Decision

Copyright in sport events - Supreme Court rules that a television production of a sport broadcast is a copyrighted work

Other decisions

New legislation

The Crop Protection (Arrangement of Importation and sale of Chemical Preparations) Regulations (Amendment), 2001 - Parallel imports of agro-chemicals

The Electronic Signature Law, 2001

Bill of Copyright and Performers Rights (Adjudication of Issues of Royalties) Law, 2001

Bill of Copyright (Statutory Amendments)(Criminal Liabilities) Law, 2001

Bill of Encouragement of Industrial Research and Development Law, 2001

The Genetic Information Law, 2000

The Prohibition against Capital Laundering Law, 2000

RC&P news -Dr. Bossmat Gonen is appointed as the firms CEO

Change In International Classification Of Services

As all practioners in the IP field are aware, the International Classification of Goods and Services under the Nice Convention, was amended by splitting Class 42 into four classes - 42 to 45.

The Israeli Patent Office has now issued guidelines confirming that the new classification will be binding as of January 1, 2002. Until December 31, 2001, applications may be filed both under the current classification or the new one, but as of January 1, 2002, only the new classification will apply.

In case of pending applications, the change in classification may be made either with the initiative of the applicant or may be initiated by the Trade Mark Office. Regarding registered trademarks, these may be reclassified, if so requested by the applicant although it is not compulsory to do so.

In the event of reclassification of an application/registered trademark, this may at times require division of an application/registration into a number of applications/registrations. In such a case, the registrations/applications will be accorded new serial numbers but will be entitles and will bear the original filing date. Filing fees will need to be paid for each new application/registration stemming from such division.

It should be noted that in accordance with Israeli law, classification does not play an important role in determining the scope of rights under a registered trademark in case of infringement and the determining factors are the description of goods or services and consequent likelihood of confusion with the alleged infringing trademark. Thus, we do not currently see a reason to apply for reclassification of existing registrations.

With regard to searches, the Patent Office indicated in its guidelines that for applications in Classes 43, 44 or 45, a search will also be made in Class 42 in order to locate prior trademarks which have not been reclassified.

Protection Of Ornamental Feature Applied To Different Versions Of An Object

The Patent Office has issued guidelines regarding the manner in which to protect an ornamental feature, which may appear in different versions of an object. The example given in the guidelines are different versions of a telephone hand-set, all of which contain the same ornamental feature. Another example of this principle may be an ornamental feature printed on different types of shirts, etc.

The guidelines indicate that in such cases it is sufficient to submit a single application for the registration of a design. Such design application should include a novelty statement relating to the ornamental feature for which protection is requested, accompanied by drawings or photographs of one specimen product.

Thus, in case novelty of a design is embodied in a specific feature, it is advisable to let us know so that we can include a novelty statement, which in effect will somewhat broaden the scope of protection of the design.

Continued Increase In The Number Of Patent Applications

According to a recent publication in Globes (the Israeli business evening daily), in the year 2000, 6,802 patent applications were filed with the Israeli PTO, 1,599 of which originated in Israel (and 2,982 originated in the United States). The data show a continued increase in the number of patent application filed. The data for the preceding four years are as follows: 1997 - 2,886 applications; 1998 - 5,056 applications; 1999 - 5,957 applications; 2000 - 6,802 applications.

CASELAW

Patents: Contributory Infringement

The Supreme Court recently issued two important judgements regarding patent laws. One judgement, dealing with parallel importation of pharmaceuticals was reviewed in our last (August 2001) newsletter. In the second judgement, the Rav-Bariach case, the Supreme Court introduced, by way of judicial legislation, the concept of Contributory Infringement to the Israeli Patent laws.

The Appellant, Rav Bariach, was the proprietor of a patent that claimed an arrangement for prevention of car theft that includes a certain combination of elements. The system consisted of three parts: (i) a rigid bar secured to the body of the car in the vicinity of (and parallel to) the gearshift stick; (ii) a padlock body fixedly mounted onto the bar; (iii) a padlock yoke adapted to be locked to the padlock body, thereby enclosing the gearshift. Defendant imported and marketed in Israel the padlock body and the padlock yoke, but not the rigid bar. However,...

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