In Amichai Trade Ltd. v. Shoresh Erkot Navadim Ltd. the Israeli Supreme Court addressed the question of protection of goodwill in functional elements.
In Amichai the appellant copied sandals that were previously protected by a patent held by respondent. The copying took place only after the patent had expired. Respondent sued appellant for infringing its goodwill in the sandalsí design. Appellant response was that the fact that it copied functional elements that are not entitled to goodwill protection. Appellant based its claim on the fact that the design was previously protected by patent, and the subject matter for patent protection is only functional.
Chief Justice Barak who delivered the unanimous opinion of the court first stated the this case does not require a final decision on whether patent protection precludes the possibility of goodwill protection, since the District Courtís finding of fact included finding that the appellant copied design elements that were not part of the patent.
However, Chief Justice Barak indicated that there are strong rationales supporting the contention that granting a patent is in itself a prima-face indication of the functionality of the products, but due to the findings of fact the Amichai case does not call for a final ruling on this issue.