Intellectual property in fashion products in Israel

The field of fashion is a field that usually operates according to period trends, each period has the accepted fashion style which has a great influence on all the fashion items designed in that period. So that you can look at the whole field of the fashion world as a tree, from which many branches and leaves sprout, each of them simulating a new design, sometimes the new branches and leaves that are created have a distinct new shape, sometimes they are similar in level of permissible inspiration to the branch from which they sprouted and sometimes they are within the scope of deceptive imitation in relation to another leaf.

We as a society are interested in encouraging the world of innovative creation and encouraging as wide a variety of expressions and designs as possible in the field of fashion, with the understanding that this field helps to improve individuality, creativity and joy in society.

Therefore, various laws were created in the field of intellectual property in relation to fashion, which were designed to establish arrangements aimed at protecting new works in the field of fashion, while balancing various interests. The balance is mainly required between the need to create an adequate incentive for creation, and the need to allow the public to use works for the promotion of culture and knowledge, all while maintaining freedom of expression and freedom of creation, and ensuring free and fair competition.

On the one hand, these intellectual property laws make it possible to deal with the phenomenon of imitations of fashion products, a phenomenon which causes designers and fashion companies many financial damages as a result of damage to the reputation and sales of their products, and on the other hand, these intellectual property laws allow the freedom of creation, occupation and freedom of competition.

How can the field of intellectual property protect fashion products? What are the different branches of law that define the rights in relation to items of clothing? What are the characteristics that affect the type of protection for the shoe? In order to get protection for a piece of jewelry, does it need to be registered? Where should the registration be made? When is it allowed or not to copy a fashion product? We will answer all of these in the article below.

The best way to protect a fashion item is by registering it as a design

The main legal tool in order to prevent the copying of a fashion product is a design registration in accordance with the Designs Law.

The owner of the design may submit to the Patents, Designs and Trademarks Authority a request for registration of the design. The registration is territorial and provides protection in the country where the design is registered. The protection period for a registered design is 25 years.

Design is defined in the Designs Law as:

“The appearance of a product or part of a product, consisting of one or more visual characteristics of the product or part of the product, as the case may be, including outline, color, shape, decoration, texture or the material from which they are made.”

Design aims to protect the creation of the designer, who created a “new and unique character” design. A design will be considered new if it has not been published in public, in Israel or outside of it, a design identical to it or a design that differs from it only in non-essential details (Section 6 of the Designs Law). A design will be considered to have a unique character if the general impression it creates on an informed user is different from the general impression another design creates on an informed user (Section 7(a) of the Designs Law).

It will be emphasized that the protection is provided for the design and aesthetic characteristics of the product. A registered design does not protect the functional aspects of the product.

A design will be eligible for protection as an unregistered design if it is new and of a unique nature and if:

“The product bearing the design was offered for sale or distributed to the public in Israel in a commercial manner, by the owner of the design or someone on his behalf, including via the Internet, within six months of the determining date” (Section 4 of the Designs Law).

The validity of an unregistered design is 3 years from the determining date (Article 65 of the Designs Law).

The owner of an unregistered design may submit to the Patent Authority a request for the registration of the design within 12 months of the determining date (Section 64 of the Designs Law).

An example of how to register a design on a fashion product:

How do you check if a product infringes rights of a registered design?

The decision as to whether a particular product infringes a registered design/model will be made in accordance with two main tests, the “eye test” and the “novelty test” along with the auxiliary test – the “deception test” (Drori, Wirzhanski, “Designs and Models Laws” (second edition), Perlstein Ginoser Publishing, p. 558 (2019); Tel Aviv (Central) 4987-12-14 Diesel Spa v. Hudis Ltd., p. 6 (Nevo, 2015) (“Diesel case“).

As part of the eye test, the court should put itself in the shoes of the consumer of the product under discussion and examine whether the external form of this product, as it is visibly perceived by the consumer’s eye, constitutes a “striking imitation” of the protected product in the sample. This is not the “eye” of the court, but the eye of the relevant consumer to whom the product is aimed.

The eye test mainly focuses on the overall impression created by comparing the registered design to the allegedly infringing product and the general contract perceived by the eye of the reasonable consumer, and there is no expectation that the consumer will perform a meticulous examination as if he were an expert in the field of the product being tested. The product that is alleged to be infringing must be compared to the design, to the drawing of the design or to its picture, as attached to the request for the registration of the design, and not to the product itself which is created by the owner of the protected right (Diesel case, p. 6).

In the case of Diesel, the court examined Diesel’s design against the Hoodies jeans and got the impression that the salient features of the jeans are remarkably similar to those of the sample, although in the back of the allegedly infringing jeans there is a difference in the pattern of the seams on the pockets. However, the court ruled that it is mainly a cosmetic difference, which does not, in itself, rule out an alleged violation of the design, and this in light of the great similarity in the general contracts between the aforementioned design and the allegedly infringing jeans:

In accordance with the “novelty test” the scope of the protection of the right in the design is determined according to the degree of novelty and originality of the design. In the case of Diesel, the court ruled that the mere registration in the register of designs is prima facie evidence of the existence of the renewal requirement in Diesel’s designs (Diesel case, pp. 8-9).

The “deception test” is only an auxiliary test, because according to the ordinance/law, potential consumer deception is not required to establish the violation of a sample/design. However, rooted in the ruling is the practice according to which if there is a similarity in the overall appearance of the protected product and the infringing product, which does not reach the rule of absolute similarity, it must also be examined whether there is a concern that the relevant consumer will be mistaken between the two products. In this context, it has been stated more than once that the court is required to pay attention to the fact that the consumer’s memory is not perfect and that he does not purchase the products when they are placed side by side.

In the matter of Diesel, the court ruled that contrary to the respondent’s claim, the gap in product prices, even if it is significant, does not constitute an overall barrier to the concern of misleading consumers.

Also, the court was impressed that the labels bearing the respondent’s name, which may help to differentiate the product and reduce the concern of misleading consumers, do exist, but are not found on the allegedly infringing jeans themselves, but on “detachable” labels (which include additional information about the product besides the name), which are attached to the jeans externally and temporarily and which by their very nature are meant to be removed. This is different from permanent name labels, which are attached to the product itself.

Exception: non-registration of a design on fashion products

The world of fashion design has unique characteristics in the field of industrial design, it is characterized by great dynamism, frequent changes and many designs. These facts often make it difficult for designers who wish to obtain protection for a certain fashion item to obtain effective protection for the fashion product. In addition, until the design is accepted for registration by the competent authority, a significant period of time has already passed and the fashionable item, G-D forbid, is no longer fashionable.
Design laws, in accordance with the Patents and Designs Ordinance and the protection they provide, are therefore not suitable for the protection of fashion products that depend heavily on supply and demand and frequent fashion fluctuations. The long, cumbersome and expensive registration procedure does not suit the dynamic nature of the fashion world and the large amount of the many fashion models.
The courts recognized the difficulty heaped on the shoulders of creators in general and fashion designers in particular, and the dissonance created by receiving a registered sample on the fashion items on the one hand, but the inability to enforce the right because the item is no longer relevant on the other hand. Due to the said problematics, the courts created parallel mechanisms to the design laws for the purpose of protecting fashion products, while focusing on the cause of unjust enrichment based on the A.S.H.I.R. rule. This is the case, for example, in the case of Katsav v. Psagot Adv (CC (Tel Aviv District) 2318/03 Aharon Katsav v. Psagot Adv Import and Marketing Ltd. (published in Nevo, September 24, 2007)).

The new designs law tries to deal with this problem by providing protection for an unregistered design for a period of three years. This short-term protection is suitable for the field of fashion and does not impose on the owner of the design the need to submit many applications for the registration of the design he creates.

In addition, the Designs Law allows for a grace period of 12 months for design registration from the moment the design is published. In this way, the law allows those involved in design in general and in fashion in particular, the ability to trade in a new design, check its marketability in the market and its economic viability and thus consider whether towards the end of a year from the date of the first publication, he is interested in investing and applying for the registration of the design. In this way, the owner of the design will be able to choose to receive longer protection for a product that he identifies as a commercially successful product, as well as to receive the right to receive compensation without proof of damage in relation to the infringement of a product registered as a design (Drory, Virzhanski, “Designs and Design Laws” (second edition), Perlstein Ginosar Publishing House, p. 36 (2019)).

Copyright in relation to fashion products

In principle, the pattern printed on fabric or clothing is protected by copyright as an artistic work, provided it is original. However, since a garment is a useful product dictated mainly by functional considerations and the shape of the body, it will not usually be entitled to copyright protection (Drory, Wirzensky, “Design Laws and Designs” (second edition), Perlstein Ginoser Publishing, p. 14 (2019); Tel (TA) 1311-04 Mordechai Elkrif v. Karka Ltd., at p. 5 (Nevo, 2010)).

Even if the garment passes the test of artistry and is worthy of copyright, Section 7 of the Copyright Law states that copyright protection will not be granted to a product that deserves to be registered as a design as defined in the Patents and Designs Ordinance or to a product that deserves to be registered as a design as defined in the Designs Law, unless the design is not used and is not intended to be used for industrial production (Drori, Wirzhansky, “Designs and Design Laws” (second edition), Perlstein Ginosar Publishing House, p. 21 (2019); cell 1948/04 Ella Gonen v. Pashut Import and Marketing Inc.), on p. 14 (Nevo, 2009)).

For this matter, it is common to state in relation to the condition “to be used for industrial production” that industrial production of a product is its production in more than fifty copies. However, it is appropriate to create an exception to the aforementioned rule and allow the court the discretion in certain circumstances to determine that even a product that did not fall within the scope of the 50 unit test can be considered an industrial product due to clear characteristics of the product that indicate that it is intended to be used for industrial production.

The courts usually apply this provision to fashion products. Since many fashion products deserve to be registered as designs, they will not be copyrighted. The fashion product under discussion must be examined separately in each case.

Copyright Protection of drawings in fashion products

Unlike the fashion product itself, the drawings drawn by the designer usually deserve copyright protection.

A unique and old ruling of the district court in the field of protection of fashion products holds that after the designer’s copyright in the model’s drawings has been proven, manufacturing a product that imitates the model violates the designer’s copyright. It does not matter that the fashion product is a copy, in another medium, of these drawings. Copyright infringement can also be done in this way (Tel Aviv-Jaffa) 2457-90 Tupac Amaro Ltd. v. “Joker” Textile Industries Ltd. at p. 262 (1991)).

Trademarks in the field of fashion products

Trademark law gives the trademark owner protection against counterfeit products that pretend to be his products or are deceptively similar to his products.

The function of a trademark is to serve as a means of linking the product or service with its source in order to prevent deception. The trademark allows the consumer to know that a certain product is produced by a specific manufacturer. For example, the trademark of a certain fashion company that produces clothing and footwear identifies the product (clothes and shoes) with a specific manufacturer (the fashion company) and distinguishes it from the other manufacturers (the fashion companies) that produce products of the same type (clothes and shoes). After a trademark is registered, only the owner of the registered mark is allowed to mark his products or services with the mark.

There are two main criteria to consider when choosing a trademark:

A. The trademark should be unique and cannot describe the goods or services.

B. A trademark that is similar to another trademark in a way that could cause confusion between it and the other trademark will not be registered.

Additional causes of action for the protection of fashion products

The tort of passing off in relation to fashion products

Section 1(a) of the Commercial Torts Law of 1999, states:

A dealer shall not cause an asset he sells or a service he provides to be mistakenly considered as an asset or service of another dealer or as an asset or service that has a connection to another dealer.”

In order to prove the tort of passing off, it is necessary to prove two cumulative elements: reputation and fear of misleading the public. That is, the plaintiff is required to prove that the product he manufactures has gained a reputation, and that there is a fear that the buying public will be mistaken and believe that the infringing products were manufactured by the plaintiff or are related to him (CC (TA) 60748/04 Mordechai Elkrif v. Asher Sonbolian, p. 5- 6 (Nevo, 2006) (“Mordechai Alkrief case”)).

It is not easy to prove reputation. A plaintiff seeking to prove the existence of reputation should not be limited to certain methods of proof. Copying a certain product and imitating its design are in themselves an indication of the existence of reputation (A.A. 307/87 M. Weisbrod and Sons v. D.I.G. Beit Harushet for Electrical Supplies Ltd. (P.D. Med. (1) 629, at p. 633 (1990)). However, imitation without a functional purpose, in itself, does not necessarily indicate the existence of a reputation, but it can be an additional layer to the conclusion that the plaintiff has a reputation in the product that the defendant imitated (BA 5689/94 Vargus Ltd. v. Nega Engineering Ltd. (P.D. Nev (1) 521, at p. 528 (1998)).

Application in ruling:

The matter of “Elkrief v. Sonbolian” dealt with a lawsuit concerning several models of jerseys which the plaintiffs claim were copied by the defendant:

Regarding the proof of reputation, the court ruled that the plaintiffs avoided bringing testimonials from buyers of their brand who identify the brand. It was determined that the plaintiffs did not meet the burden of persuasion to prove that the public learned to recognize the models that are the subject of the lawsuit and associate them with their brand.

Also, the court ruled that even if the element of reputation was proven, the plaintiffs failed to prove the second cumulative element – the existence of a reasonable fear of misleading the public. Despite the great similarity between one of the models of jerseys produced by the plaintiffs and one of the models of jerseys produced by the defendant, the jerseys produced by the defendant are not imprinted with the brand name of the plaintiffs but with the brand name of the defendant. Therefore, a consumer seeking to purchase a tank top will notice without difficulty that the defendant’s tank top does not bear the brand name of the plaintiffs but another name, and therefore there is no fear that he will be mistaken that this tank top was manufactured by the plaintiffs (Mordechai Alkrief case, pp. 5-8).

Restitution and unjust enrichment in relation to fashion products

Section 1(a) of the Restitution and unjust enrichment Law of  1979, states:

“Whoever received property, service, or other benefit (hereinafter – the beneficiary) that came to him from another person (hereinafter – the benefactor) without a legal right, must To return  the benefits to the benefactor, and if the return in kind is impossible or unreasonable – to pay him its value.”

There are three elements to the civil wrong of unjust enrichment :

A. Receiving a service asset or benefit (enrichment).
B. Enrichment comes to the beneficiary from the benefactor.
C. The enrichment comes to the beneficiary not according to a right in the law.

In order to prove unlawful enrichment in intellectual property law, an “additional element” must be proven – wrongful behavior tainted by bad faith, or unfair competition on the part of the defendant. In other words, it is necessary to prove the existence of another element according to which the origin of the similarity is improper behavior and bad faith on the part of the defendant (REA 5768/94 A.S.Y.R. Import Export and Distribution v. Forum Accessories and Consumer Products Ltd. (4) 289, at pp. 475-476 (1998)).

The more innovative, important and with a more substantial contribution the work is, the greater the tendency to see its imitations as unfair competition. Also, there are other considerations to take into account: the effort invested in product development; the intensity of copying; The mental state of the competitor, whether he was aware of the copying or not; Are there reasonable alternatives to create a functionally similar product ((REA 5768/94 A.S.Y.R. Import Export and Distribution v. Forum Accessories and Consumer Products Ltd. P.D. Nev (4) 289, at pp. 478-479) 1998)).

Application in ruling:

In the case of “Elcrief v. Sonbolian” (mentioned above), the court stated that it was proven that the plaintiffs had invested resources in the design of their models. It was also proven that the defendant who copied the jersey model from the plaintiffs did not invest in the development of this model and became enriched at the expense of the plaintiffs through the sale of the copied model. Copying a finished product saves the copyist the need to invest resources in the design of the product and its production, and allows him to benefit from the investment of the original manufacturer, and this should be seen as unjust enrichment at the expense of the original manufacturer. It was determined that this behavior of the defendant is improper and tainted by bad faith on his part. Therefore, in this case, in addition to the other elements of the cause of unjust enrichment, the “additional element” also applies. (The case of Mordechai Alkrief, at p. 8-10).

Therefore, the court required the defendant to pay the plaintiffs a total amount of NIS 20,000.

In the matter of Katsav v. Psagot Aad (TA (Talo districts) 2318/03 Aharon Katsav v. Psagot Aad Import and Marketing Ltd. (published in Nevo, September 24, 2007)) the court ruled that although the tort of passing off was not proven in relation For the reputation component of the product, it is still possible to award compensation in the amount of 100,000 NIS according to the tort of unjust enrichment in relation to copying models of fashion products:

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