Last September, Israel went online as part of the Madrid system for trademark registration. This followed the necessary legislative and regulatory amendments to facilitate Israel’s participation in this system.
The Hague Agreement is to designs what the Madrid system is to trademarks: and international filing system that enables an applicant to obtain design protection in several countries at once. As explained on WIPO’s web site,
“This System gives the owner of an industrial design the possibility to have his design protected in several countries by simply filing one application with the International Bureau of WIPO, in one language, with one set of fees in one currency (Swiss Francs). An international registration produces the same effects in each of the designated countries, as if the design had been registered directly with each national office, unless protection is refused by the national office of that country.”
Israel is not a party to the Hague Agreement. Notwithstanding this fact, earlier this month, the head of the ILPTO, Asa Kling, posted a draft circular, in which he proposed to have the ILPTO recognize claims for priority to Hague system applications made in Israel design applications. His reasoning was that many of the Hague system countries are also signatories to the Paris Convention (as is Israel), and since for those countries filing via Hague is equivalent to filing in those countries themselves, he should accord Hague system applicants priority as if he they had filed in their own countries and claimed priority via the Paris Convention.
On its face, there is a certain logic to the Commissioner’s proposal: why should Hague system applicants have to file twice, once in Paris Convention country and once via the Hague system, in order to be able to claim priority in Israel?
But legally the proposal is hard to justify. Treaties only become enforceable in Israel once local legislation has been amended to implement them, so even if Israel had signed the Hague Agreement, it would still need to enact appropriate enabling legislation. Needless to say, in the absence of such accession to the agreement, the legal machinery to recognize Hague Agreement priority claims is not in place. The Commissioner cannot do by internal PTO regulation that which requires action by the Knesset to do. Indeed, he might be doing applicants a disservice by recognizing such priority claims, because an Israel court might later say he acted ultra vires, disallow the priority claim and, if there was internet publication of the design in the interim, void the design registration.
Given that problem, the Commissioner’s proposal is inscrutable from the political perspective: his predecessor was run out of town on a rail for ceasing paper publication of the Patents Journal without getting the Knesset to first enact the necessary legislative changes. Mr. Kling’s proposal is in effect an announcement that he wishes to repeat his predecessor’s folly and usurp the Knesset’s powers.
I don’t know why Mr. Kling seems set on repeating the past, rather than learning from others’ mistakes. I suspect that part of the problem is that he is receiving advice from some of the same people who unwisely counseled his predecessor.
In any event, there is no way to tell from the ILTPO’s web site if Mr. Kling received any comments on his proposal, as to date he has never published any such comments (a lack of transparency that will be the subject of a future post), but the guess here is that this particular proposal will not be implemented.
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