- TABLE OF CONTENTS
- Purpose of the Law
- Chapter 1Copyright
- Chapter 2Designs
- Chapter 4Trade Marks
- Chapter 5Appellations of Origin
- Chapter 3.1Geographical Indication
- Chapter 5.1Rights in Respect of Trade Marks
- Chapter 7Prohibited Imports and Exports
- Chapter 8Commencement, Application and Transitional Provisions
Law to Amend Intellectual Property Laws—
(Modification to Suit the Provisions of the TRIPS Agreement)
5760—1999
TABLE OF CONTENTS Article Chapter 1: Chapter 2: Purpose of the Law ....................................................... Copyright Amendment of Copyright Ordinance ........... Amendment of Copyright Act....................................... Designs Amendment of Patents and Designs Ordinance ............ Amendment of Patents Law .......................................... 1 2 3 4 5 Chapter 4: Trade Marks Amendment to Trade Marks Ordinance ........................ 6 Chapter 5: Appellations of Origin Amendment to Appellations of Origin (Protection) Law ...............................................................................Amendment of Merchandise Marks Ordinance............. Amendment of Performers and Broadcasters Rights Law ............................................................................... 7 8 9 Chapter 7: Chapter 8: Prohibited Imports and Exports.....................................Commencement, Application and Transitional Provisions Commencement ............................................................Application and Transitional Provisions ....................... 10 11 12
Purpose of the Law
1. The purpose of this Law is to amend intellectual property laws to conform with the requirements of the World Trade Organization Agreement relating to aspects of intellectual property rights (Agreement on Trade-Related Aspects of Intellectual Property Rights Including Trade in Counterfeit Goods—(TRIPS)) (hereinafter: “TRIPS”).
Chapter 1
Copyright
Amendment of Copyright Ordinance
2. In the Copyright Ordinance1—
(1) Section 2—repealed;
(2) In section 2A, the words “in this Ordinance, “computer programs”—whether in source or object code” shall be inserted at the end;
(3) After section 3F, the following shall be inserted:
“Rental of Computer Software
3F1. The rental of computer programs for commercial purposes shall be copyright within the meaning of such term in the Copyright Act 19112 except where the computer program itself is not the essential object of the rental.”;
(4) The following shall be inserted after section 7A:
“Subjects not Protected
7B. Notwithstanding the provisions of section 1 of the Copyright Act 1911, no copyright shall subsist in any of the following: - (1)
- an idea;
- (2)
- a process or method of performance;
- (3)
- a mathematical concept;
- (4)
- a fact or datum, on their own;
- (5)
- the daily news;
however, copyright shall subsist in the manner in which these are expressed.
Destruction of Goods
7C. Without derogation from the provisions of section 7 of the Copyright Act 1911, the court may, at the end of the hearing of a claim, order the destruction of goods produced in infringement of copyright or used to perform such an infringement; a party filing an application for the destruction of goods under this section shall advise the Israel Police Department of such in the manner to be prescribed in the regulations, and the court shall not deal with the application without providing an opportunity to the police to make claims.
Grant of Notice to Director of Customs
7D.—(a) The holder of copyright in a work whose copyright has been infringed, or where there is a reasonable suspicion that it will be infringed, may give notice in writing to the Director of Customs to the effect that he is the holder of copyright in the work, and requesting the Director to delay releasing the goods that he claims are infringing copies of the work and to treat them as goods the import of which is prohibited under the Customs Ordinance3.
(b) A notice under sub-section (a) shall include one of the following: - (1)
- An example of the original work or a non-infringing copy of it in which the applicant has copyright and in respect of which the holder gives notice of the importation of infringing copies;
- (2)
- A catalog or any other document that enables the Customs Director to compare the original work or non-infringing copy of it with the infringing copies.
- (c)
- The holder of copyright shall provide the Customs Director with the following information, to the extent that he has knowledge of it:
(1) The number of parcels to be received;
- (2)
- Sufficient notation of means of importation or the name of the ship bringing the infringing copies;
(3) The date on which the infringing copies are meant to be received.
- (d)
- The copyright holder must provide the Customs Director with primary evidence, and a personal guarantee, as prescribed by the Customs Director, in order to cover all expenses connected with detaining goods, or in order to compensate for any damage caused as a result of the detaining of goods, should it become apparent that the detention of the goods was unjustified, and to pay any fee prescribed for this purpose in the Customs Ordinance.
- (e)
- The provisions of this section shall not apply to infringing copies imported for personal use as defined in section 129 of the Customs Ordinance.”;
Amendment of Copyright Act
3. Section 14 of the Copyright Act 1911 shall no longer apply in Israel.
Chapter 2
Designs
Amendment of Patents and Designs Ordinance
4. In the Patents and Designs Ordinance4—
(1) The following shall be inserted at the end of section 2:
““World Trade Organization”—the World Trade Organization constituted by the agreement signed in Marrakech on 15 April 1994*;
“Member state”—a state that is party to the Paris Treaty or a member of the World Trade Organization;
“Paris Treaty”—the Treaty relating to Industrial Property Protection signed in Paris in 18835, as amended, to the extent that Israel is bound by such;**”
(2) The following shall be inserted at the end of section 33:
“(4) Despite the provisions of sub-sections (2) and (3), where the proprietor of a design has not requested an extension of the period of copyright and has not paid the fee on the date set out as aforesaid in sub-sections (2) or (3), such person may, during a period of six months commencing at the end of the first or second period of five years, as the case may be, request an extension of the period of copyright, subject to the payment of a fee in addition to the fee set out under these sub-sections.”;
(3) The following shall replace section 52:
“Priority
52.—(a) Where the proprietor of a design files an application for registration of a design for a design in respect of which such person or a person preceding him in ownership has already filed an application for registration in one or more member states (hereinafter: the “prior application”) and the prior application was filed on behalf of a citizen or resident of the said state, the proprietor may demand that for the purposes of sections 30(f) and 36, the date of the first prior application shall be the date of the application filed in Israel (hereinafter: “priority”), if all of the following have been fulfilled: - (1)
- The application in Israel is filed within six months after the filing of the first prior application;
- (2)
- Priority is claimed in Israel within two months after the filing of the application in Israel;
- (3)
- A copy of the prior application together with the sketches accompanying it, certified by the competent authority in the member state in which the prior application was filed, were filed with the registrar within the time prescribed by the Minister of Justice;
- (4)
- The design set out in the prior application and the design sought to be registered by the applicant are fundamentally similar.
- (b)
- The provisions of sub-section (a) shall also apply to an application to register a design based on an application to register a utility model.”;
- (4)
- In section 56, the words “and renewal of them” shall come after the words “registration of designs” in sub-section (1)(g).
Amendment of Patents Law
5. In the Patents Law 5727—19676— - (1)
- In section 1—
- (a)
- the following shall be inserted before the definition of “inspector”:
““World Trade Organization”—the World Trade Organization constituted by the agreement signed in Marrakech on 15 April 1994***;”;
(b) the following shall be inserted after the definition of “union State”:
““Member state”—a state that is party to the Paris Treaty or a member of the World Trade Organization;”; - (2)
- In section 3, the words “in any technological field” shall be inserted after the words “a process”, and the word “industrial” shall replace the words “industrial or agricultural”;
- (3)
- In section 10(a), the words “in a member state (hereinafter: the “prior application”) and the prior application is filed on behalf of the citizen or resident of such state” shall replace the words “in Israel or in any union State (hereinafter: the prior application”)”;
(4) In section 50, the following shall replace sub-section (b):
“(b) With regard to an invention which is a process for manufacturing a product, in a claim for infringement, the defendant must prove that the process in which use was made to manufacture an identical product was different from that protected by the patent; for the purposes of this sub-section, an identical product manufactured without the consent of the proprietor of the patent will be considered as a product manufactured using the process protected by the patent, unless proven otherwise, if the following two elements exist: - (1)
- the proprietor of the patent was unable to clarify, using reasonable means, which process was actually used in the manufacture of the identical product;
- (2)
- there is a high level of reasonableness that the identical product was manufactured using the process protected by the patent.”;
- (5)
- In section 118(a), the words “in writing” shall be inserted after the words “notify him” and the words “by way of manufacture or importing, and if so, the extent manufactured or imported and the place of manufacture” shall replace the words “by way of manufacture, and if so, the extent and place of manufacture”;
- (6)
- In section 119, paragraphs (3), (4) and (5) shall be deleted;
- (7)
- Section 120 is repealed;
- (8)
- In section 121—
- (a)
- in sub-section (a), the words “and provided that the later invention contains an important technological advance of considerable economic value as compared with the previous invention” shall replace the end of the sub-section commencing with the words “provided that the later invention”;
- (b)
- in sub-section (b), the words “the same purpose” shall replace the words “the same industrial purpose”;
(c) the following shall be inserted after sub-section (c):
“(d) a license granted to the proprietor of a later invention under the provisions of subsection (a) shall not be assignable unless the rights in the later invention are assigned together with the license.”;
(9) in section 122— - (a)
- at the beginning of the section, the words “section 117” shall replace the words “section 117 or 120”;
- (b)
- in paragraph (2), the words “or importing” shall be inserted after the words “by way of manufacture”;
- (c)
- in paragraph (4), the words “or importing” shall be inserted after the words “by way of manufacture”;
- (d)
- in paragraph (5), the words “or importing” shall be inserted after the words “by way of manufacture”;
(10) the following shall replace section 123:
“Restriction of Scope of Compulsory License
123. A license under this Chapter shall be granted primarily for the supply of the local market.”;
(11) in section 126— - (a)
- at the beginning of the sub-section, the words “having consideration of the legitimate interests of the proprietor of the patent” shall be inserted after the words “in the circumstances of the case”;
- (b)
- in paragraph (2), the words “having consideration, inter alia, of the economic value of the license and of the patent—the” shall be inserted before the words “modes of determining”;
(12) the following shall be inserted after section 126:
“Transfer of Compulsory License
126A. A license awarded under this Chapter may not be transferred unless that part of the business or goodwill connected with use of the patent is transferred together with the license.”.
Chapter 4
Trade Marks
Amendment to Trade Marks Ordinance
6. In the Trade Marks Ordinance [New Version], 5732—19727— - (1)
- in section 1—
- (a)
- the following shall be inserted after the definition of “trade mark”:
“Well-known trade mark”—a mark that is well known in Israel as a mark owned by a person that is a citizen of a member state, a permanent resident of such state or who has an active industrial or commercial business in such state, even if the mark is not a trade mark registered in Israel or if there are no users of the mark in Israel; for the purposes of determining whether a trade mark is a well-known trade mark in Israel, the extent to which the mark is known in public circles relating to it and the extent to which it is known as a result of marketing, shall be taken into account, inter alia.”;
(b) the following shall be inserted at the end of the definition of “infringement”:
“(3) of a well-known trade mark even if it is not a registered trade mark, or of a mark so similar to it as to be misleading in respect of goods for which the mark is well known or in respect of goods of the same description;
(4) of a well-known trade mark which is registered, or a mark similar thereto, in respect of goods not of the same description, provided that such use could indicate a connection between such goods and the proprietor of the registered trade mark and the proprietor of the registered trade mark might be harmed as a result of such use.”;
(c) the following shall be inserted at the end of section 1:
““World Trade Organization”—the World Trade Organization constituted by the agreement signed in Marrakech on 15 April 1994****;”;
““Member state”—a state that is party to the Paris Treaty or a member of the World Trade Organization;”;
““Geographical indication”—means an indication that identifies in Israel goods as originating in a given geographical area of a member state, or region or part thereof, where a given quality, characteristic or reputation of the good is essentially attributable to its geographical origin;”; - (2)
- in section 11—
- (a)
- the following shall be inserted after paragraph (6):
“(6A) a mark containing a geographical indication in respect of goods originating in the geographical area indicated, if the geographical indication may be misleading as to the real geographical area in which the goods originated;
(6B) a mark containing a geographical indication that is literally correct, however that contains a false representation to the effect that the goods originated in a different geographical area;”;
(b) the following shall be inserted after paragraph (11):
“(12) a mark identifying wine or spirit beverages that contains a geographical indication, if such wine or spirit beverage did not originate in that geographical area; - (13)
- a mark identical to, or misleadingly similar with, a well-known trade mark even if such mark is not registered in respect of goods for which the mark is well known or in respect of goods of the same description;
- (14)
- a mark identical to or similar to a well-known trade mark being a registered trade mark, even in respect of goods not of the same description, if the mark sought to be registered would indicate a connection between the goods in respect of which the mark is sought and the registered proprietor of the trade mark, and the registered proprietor of the trade mark is likely to be harmed as a result of using the mark sought.”;
(3) in section 16(a), the following shall replace paragraph (2):
“(2) the mark is devoid of any distinctive character; a trade mark shall not be disqualified from registration if it is different from the trade mark registered in its country of origin in a manner that does not alter its distinctiveness, and does not adversely affect its identity in the form in which it has been registered in the said country of origin;”;
(4) in section 24, the following shall be inserted after sub-section (a):
“(a1) the following are causes for opposition to the registration of a mark:
(1) there is a reason for which the registrar may, under the provisions of this Ordinance, refuse the application for registration; - (2)
- the opponent, and not the applicant, is the owner of the mark.”;
- (5)
- the following shall be inserted in section 39 after sub-section (a):
“(al) Notwithstanding the provisions of sub-section (a), an application for removal of a trade mark on the grounds that the application for registration of the mark was filed in bad faith may be filed at any time.”;
(6) In section 41—
(a) in sub-section (a), the words “during the three years” shall be inserted in place of the words “during the two years”;
(b) the following shall be inserted after sub-section (e):
“(f) in this section, “use” of a trade mark shall include—
1. The purpose of this Law is to amend intellectual property laws to conform with the requirements of the World Trade Organization Agreement relating to aspects of intellectual property rights (Agreement on Trade-Related Aspects of Intellectual Property Rights Including Trade in Counterfeit Goods—(TRIPS)) (hereinafter: “TRIPS”).
Chapter 1
Amendment of Copyright Ordinance
2. In the Copyright Ordinance1—
(1) Section 2—repealed;
(2) In section 2A, the words “in this Ordinance, “computer programs”—whether in source or object code” shall be inserted at the end;
(3) After section 3F, the following shall be inserted:
“Rental of Computer Software
3F1. The rental of computer programs for commercial purposes shall be copyright within the meaning of such term in the Copyright Act 19112 except where the computer program itself is not the essential object of the rental.”;
(4) The following shall be inserted after section 7A:
“Subjects not Protected
7B. Notwithstanding the provisions of section 1 of the Copyright Act 1911, no copyright shall subsist in any of the following: however, copyright shall subsist in the manner in which these are expressed.
Destruction of Goods
7C. Without derogation from the provisions of section 7 of the Copyright Act 1911, the court may, at the end of the hearing of a claim, order the destruction of goods produced in infringement of copyright or used to perform such an infringement; a party filing an application for the destruction of goods under this section shall advise the Israel Police Department of such in the manner to be prescribed in the regulations, and the court shall not deal with the application without providing an opportunity to the police to make claims.
Grant of Notice to Director of Customs
7D.—(a) The holder of copyright in a work whose copyright has been infringed, or where there is a reasonable suspicion that it will be infringed, may give notice in writing to the Director of Customs to the effect that he is the holder of copyright in the work, and requesting the Director to delay releasing the goods that he claims are infringing copies of the work and to treat them as goods the import of which is prohibited under the Customs Ordinance3.
(b) A notice under sub-section (a) shall include one of the following: Amendment of Copyright Act
3. Section 14 of the Copyright Act 1911 shall no longer apply in Israel.
Amendment of Patents and Designs Ordinance
4. In the Patents and Designs Ordinance4—
(1) The following shall be inserted at the end of section 2:
““World Trade Organization”—the World Trade Organization constituted by the agreement signed in Marrakech on 15 April 1994*;
“Member state”—a state that is party to the Paris Treaty or a member of the World Trade Organization;
“Paris Treaty”—the Treaty relating to Industrial Property Protection signed in Paris in 18835, as amended, to the extent that Israel is bound by such;**”
(2) The following shall be inserted at the end of section 33:
“(4) Despite the provisions of sub-sections (2) and (3), where the proprietor of a design has not requested an extension of the period of copyright and has not paid the fee on the date set out as aforesaid in sub-sections (2) or (3), such person may, during a period of six months commencing at the end of the first or second period of five years, as the case may be, request an extension of the period of copyright, subject to the payment of a fee in addition to the fee set out under these sub-sections.”;
(3) The following shall replace section 52:
“Priority
52.—(a) Where the proprietor of a design files an application for registration of a design for a design in respect of which such person or a person preceding him in ownership has already filed an application for registration in one or more member states (hereinafter: the “prior application”) and the prior application was filed on behalf of a citizen or resident of the said state, the proprietor may demand that for the purposes of sections 30(f) and 36, the date of the first prior application shall be the date of the application filed in Israel (hereinafter: “priority”), if all of the following have been fulfilled: Amendment of Patents Law
5. In the Patents Law 5727—19676— ““World Trade Organization”—the World Trade Organization constituted by the agreement signed in Marrakech on 15 April 1994***;”;
(b) the following shall be inserted after the definition of “union State”:
““Member state”—a state that is party to the Paris Treaty or a member of the World Trade Organization;”; (4) In section 50, the following shall replace sub-section (b):
“(b) With regard to an invention which is a process for manufacturing a product, in a claim for infringement, the defendant must prove that the process in which use was made to manufacture an identical product was different from that protected by the patent; for the purposes of this sub-section, an identical product manufactured without the consent of the proprietor of the patent will be considered as a product manufactured using the process protected by the patent, unless proven otherwise, if the following two elements exist: (c) the following shall be inserted after sub-section (c):
“(d) a license granted to the proprietor of a later invention under the provisions of subsection (a) shall not be assignable unless the rights in the later invention are assigned together with the license.”;
(9) in section 122— (10) the following shall replace section 123:
“Restriction of Scope of Compulsory License
123. A license under this Chapter shall be granted primarily for the supply of the local market.”;
(11) in section 126— (12) the following shall be inserted after section 126:
“Transfer of Compulsory License
126A. A license awarded under this Chapter may not be transferred unless that part of the business or goodwill connected with use of the patent is transferred together with the license.”.
Amendment to Trade Marks Ordinance
6. In the Trade Marks Ordinance [New Version], 5732—19727— “Well-known trade mark”—a mark that is well known in Israel as a mark owned by a person that is a citizen of a member state, a permanent resident of such state or who has an active industrial or commercial business in such state, even if the mark is not a trade mark registered in Israel or if there are no users of the mark in Israel; for the purposes of determining whether a trade mark is a well-known trade mark in Israel, the extent to which the mark is known in public circles relating to it and the extent to which it is known as a result of marketing, shall be taken into account, inter alia.”;
(b) the following shall be inserted at the end of the definition of “infringement”:
“(3) of a well-known trade mark even if it is not a registered trade mark, or of a mark so similar to it as to be misleading in respect of goods for which the mark is well known or in respect of goods of the same description;
(4) of a well-known trade mark which is registered, or a mark similar thereto, in respect of goods not of the same description, provided that such use could indicate a connection between such goods and the proprietor of the registered trade mark and the proprietor of the registered trade mark might be harmed as a result of such use.”;
(c) the following shall be inserted at the end of section 1:
““World Trade Organization”—the World Trade Organization constituted by the agreement signed in Marrakech on 15 April 1994****;”;
““Member state”—a state that is party to the Paris Treaty or a member of the World Trade Organization;”;
““Geographical indication”—means an indication that identifies in Israel goods as originating in a given geographical area of a member state, or region or part thereof, where a given quality, characteristic or reputation of the good is essentially attributable to its geographical origin;”; “(6A) a mark containing a geographical indication in respect of goods originating in the geographical area indicated, if the geographical indication may be misleading as to the real geographical area in which the goods originated;
(6B) a mark containing a geographical indication that is literally correct, however that contains a false representation to the effect that the goods originated in a different geographical area;”;
(b) the following shall be inserted after paragraph (11):
“(12) a mark identifying wine or spirit beverages that contains a geographical indication, if such wine or spirit beverage did not originate in that geographical area; (3) in section 16(a), the following shall replace paragraph (2):
“(2) the mark is devoid of any distinctive character; a trade mark shall not be disqualified from registration if it is different from the trade mark registered in its country of origin in a manner that does not alter its distinctiveness, and does not adversely affect its identity in the form in which it has been registered in the said country of origin;”;
(4) in section 24, the following shall be inserted after sub-section (a):
“(a1) the following are causes for opposition to the registration of a mark:
(1) there is a reason for which the registrar may, under the provisions of this Ordinance, refuse the application for registration; “(al) Notwithstanding the provisions of sub-section (a), an application for removal of a trade mark on the grounds that the application for registration of the mark was filed in bad faith may be filed at any time.”;
(6) In section 41—
(a) in sub-section (a), the words “during the three years” shall be inserted in place of the words “during the two years”;
(b) the following shall be inserted after sub-section (e):
“(f) in this section, “use” of a trade mark shall include— Copyright
Chapter 2
Designs
Chapter 4
Trade Marks