Gadi Elimelech is an Israeli fashion designer who launched his independent career on 2010. His work includes designing fashion for television, magazines and personal styling for artists and celebrities.
Recently Gadi Elimelech sued the fashion company Renuar, a chain of women’s clothing, for selling a dress that was confusingly similar to his design.
The dress was presented in Renuar’s 2014 collection and Elimelech’s dress was presented at 2013 collection.
Gadi sued Renuar for passing off and unlawful enrichment and requested damages and permanent injunction against Renuar.
The unique disputed design feature is presented above. The one on the right is Elimelech’s and that on the left is Renuar’s.
The Tel Aviv District court has accepted Elimelech’s claims and ruled that Renuar’s dress was confusingly similar to Elimelech’s dress.
The Court ruled that the disputed dress constitute passing off and that Elimelech has proved goodwill.
In assessing goodwill, the Court based his ruling primarily on the fact that some celebrities were shown wearing Elimelech’s dress, such as Ninet Taieb, an Israeli young singer.
The Judge express his doubts that a well-known figure such as Ninet Taieb would have choose to wear a dress unless designed by a well-known designer that gained goodwill.
The Court ruled that Renuar was aware of Elimelech’s design. Eventually, the court awarded damages of 55,000 Shekels and a further legal expense.
In order to prove passing off in Israel, theplaintiff needs to show two basic elements:
First, that the designer has gained goodwill in the specific design in a way that that the relevant consumer would recognize the design only with the plaintiff.
Second, the plaintiff needs to show that there is likelihood of confusion between the products.
It should be noted that assessing reputation should be based on the familiarity of the specific design not the identity of the celebrity who was wearing it.
The fact that some celebrities were seen wearing some fashion item doesn’t necessarily shows that the item or the designer has gained goodwill.
Many young fashion designs are struggling daily to promote their products in an extremely competitive market and usually don’t have the financial resources to invest in traditional marketing such as advertising to build up a brand.
So, they use alternative methods such as giving some items to celebrities hoping they will actually wear them and maybe endorse their products or even just so they could take some photos with them for marketing purposes.
Proving reputation in the fashion design cannot be based on few photos of celebrities wearing the design but rather must be examined also on hard evidence such as extent of use, advertising, numbers of sales, consumer surveys that shows that the relevant consumer actually recognize the design with the designer etc’.
From reviewing the decision, it seems that the plaintiff did not present any consumer surveys or hard proof that establishes sufficient reputation in the eye of relevant consumers.
In addition, the so called “unique” feature of Elimelech’s dress might be considered as a quite common feature in the fashion market. What do you think?
The Court was persuaded that since Renuar wasn’t able to explain the similarity between the dresses, his conclusion was that Renuar has copied the design.
It seems that The Court has given too much weight to the visual comparison instead of analyzing whether such a design entitles for such a protection at all.
It should be noted that according to the Israeli law the design of a fashion item per se (not the brand name or logo which is protected under trademark law) cannot be protected by copyrights or any other law, but only as a registered design. There is also an alternative to claim an unlawful enrichment but the Court chose not to do so.
Since the said dress wasn’t registered as a design and since the Renuar dress was sold under Renuar’s logo the only valid alternative was to use the passing off lawwhich depends on proving actual reputation in the specific design, which can be a high burden for young designers.
Although copying designs by international fashion companies seems to be quite a common practice in the last years, in some cases, it is possible to prevent such common practice.
On the other hand, it is very important to avoid from protecting obvious or common features designs in a way that might limit the competition in the market and eventually damage the consumers.
Disclaimer – Nothing in this article is considered to be any kind of legal opinion whatsoever.