Can rubber window seals be registered designs?

Modern Israeli homes and schools are built with sealed rooms. These rooms, reinforced with special concrete, are designed to provide protection from rockets and chemical and biological warfare.

Termo-Gumi LTD (Thermo Seal) owns Registered Design 310007 for a window seal for the regulation window of a sealed room. The seal is registered in Class 25(1) as a rubber seal for an aluminium profile.

Agmon Company for the Manufacture of Rubber and Plastics LTD initiated annulment proceedings challenging the validity of the design registration on the grounds that the seal had previously been exhibited, with a supplementary argument that the seals being manufactured were slightly different from the registered seal. It also argued that since the seal was sold cut to size, and the registration showed only a section, as would be suitable for continuous extrusions, the registration was invalid as it did not adequately indicate the appearance of the seal.

Deputy Commissioner Noah Shalev Shmulovich argued that the registered design was slightly different from those previously available, and reproduced images from the catalogues and previous registrations. He also ruled that the slightly different profiles of the seals actually being manufactured with regard to the shape of an aperture running through the extrusion, and the exact shape of the tongue that contacts the glass, were both the results of tolerances when extruding rubber. He ruled that the customer was the building contractor and not the home purchaser, and considered the design to be sufficiently novel and original to be registrable.

The annulment proceeding was dismissed and costs of NIS30,000 were awarded to Termo Gumi (Annulment Proceedings Concerning Registered Design Number 31007 to Termo Gumi LTD, brought by Agmon Company for Manufacture of Rubber and Plastics LTD, before Noach Shalev Shmulovich, 4th April 2011).

Comment
The deputy commissioner relied heavily on Russell-Clarke and Howe on Industrial Designs, a leading text in the field. He also quoted heavily from US design rulings. He ruled that the amount of novelty required for design registration is slight, as is the degree of work around required to avoid infringement. In his opinion, the judge should put himself or herself in the position of the customer and compare the design with others on the market.

However, rubber window seals for sealed rooms are purely functional and, when the window is closed, are unseen. The only justification given in the ruling for allowing a design registration for such a seal was that if the current design was not registrable, then nor was the previous design.

There is insufficient Israel case law on the design registrability of purely functional objects. In the United States, a design patent for such an object would not have the novelty and aesthetic non-obviousness to stand up in court. Consequently, the citations from US case law are at best irrelevant.

Furthermore, the component is not merely functional, but also essentially a replacement part. As such, it is arguably not in the public interest to allow one firm to have a monopoly. 

Seals for such purposes may need to conform to various standards and could be packaged with the manufacturer's name or on a roll showing the manufacturer's name. However, it is unconvincing that the correct balance between competition law and the conflicting interests of the manufacturer, competitors and the public is to require the competitor to design around components of this nature.