Cancellation of Design Requires Near-Identical prior art

In Application for the Cancellation of Registered Design Serial Number 31007 (Termo Rubber Ltd. v. Agmon Company for the Production of Rubber & Plastics Ltd.)  Agmon sought the cancellation of a registered design for rubber sealing of aluminum frames, used mainly for windows. The design whose cancellation was sought looks like this:

Agmon argued the registered design was published before the date of its registration; that the shape of the registered design was merely functional and could not be seen by consumers and therefore not eligible for design registration.

Termo argued the Patent Office was limited in cancellation proceedings to a cause of action relating to prior publication only (Section 36 of the Patents & Trademarks Ordinance).  Termo further argued the registered design was sold in long sleeves and not in slices as shown in the design registration.

The Israeli Patent Office IP Judge, Noah Shlomovitz, ruled on April 4, 2011 that since the consumers of the design were professionals who assemble and install windows, the fact that the product protected by the design was sold in sleeves was not material since these professionals discern between various profiles through looking at the edge of the sleeve.

Furthermore, Judge Shlomovitz, stated that even a functional product may be protected by a design if it has aesthetic features. The functionality test established is to review whether the product protected by the design could not be designed in any other way, without making its production more expensive. Thus, the functional elements must be removed and then the remaining shape reviewed according to the said test.

In this case, because the product covered by the design is a profile used in the assembly of windows, a large part of the design is functional. While these elements are removed the and the design is compared with the prior art, the IP Judge reiterated the Patent Office’s previous position that in some areas the requirements for novelty and originality may be satisfied with even minor changes. (See Civil Appeal 3406/96 Sela Company for Cemenet Products Ltd. v. Akerstein Industries Ltd. (1.3.1999)).

The prior art designs brought by Termo looks like this:


Some of these designs were not capable of serving as prior art references since they were published after the relevant date, and the IP Judge determined the rest of the designs were not sufficiently similar since small changes were sufficient to distinguish between the various designs.

In addition, the fact that the market for profiles of such kind was saturated meant that the Design Registrar had to ensure the registration of one design will not prevent others from manufacturing a product having the same function so long as there is an aesthetic difference.

The motion for cancellation was denied.