Israeli Supreme Court – Copying a Design is not Enough for a Liability

On December 2016 we reported on the fashion designer Gadi Elemelech who sued Renuar a chain of women’s clothing in Israel, for selling dresses that was confusingly similar to his designed dress.

The Court District Court  ruled that the disputed dress constitute passing off and that Elimelech has proved goodwill.

We criticized this decision and indeed the ruling was appealed to the Israel Supreme Court which overturned it, in an agreed decision without costs.

The Supreme Court simply mentioned that copying a design is not enough for a liability and referred to the precedent of 945/06 General-Mills vs Meshubach ruling in which  the Supreme Court stipulated that a mere imitation of a product cannot constitute a passing off unless there is a likelihood of confusion between the products. It is also imperative to establish a reputation in order to sue for a passing off claim.


It become more and more difficult to protect unregistered designs in Israel, but soon there will be new regulations on protecting unregistered designs. Stay tuned.

Israel’s New Design Law – New Protection for Designs

On July 26, 2018 the new Israeli Designs Law will come into force and it is vital to be aware of the changes it brings to the legal regime concerning designs in Israel, as these effect both new and old designs.

These changes bring the Israeli law in line with European law and international trends. The following are the new law’s most prominent changes from the Patents and Designs Ordinance of 1924 which it replaces.

  • Unregistered Designs Will be Protected

While under the previous law no protection was provided for unregistered designs, the new law provides certain protection for up to 3 years for unregistered designs.

However, unregistered designs are protected exclusively when the copy was made by an entity that was aware of the original design. In the previous regime unregistered designs that were published could not be registered and therefore could not be protected.

  • Grace Period

The new regime provides a “grace period” in which designs that are marketed in Israel as  non-registered designs, may, within 12 months, be registered. These provisions allow limited protection to unregistered designs, similar to the European law.

  • Broader Definition of the Protected Items

The new law will replace the term “article” with the term “product”. Therefore, it will also cover graphical symbols and screen displays, thus bringing the law into the 21st century.

  • Extended Duration

The duration of the protection for registered designs under the new law will be extended to 25 years (as opposed to 15 years according to the existing law subject to a timely renewal every 5 years).

Following this change, the Patents and Designs Ordinance was revised and now allows an additional extension period of 3 years, thus totaling at 18 years for designs registered before the new law comes into force.

  • Changing the Novelty Requirement

The new law has changed the requirement for novelty. Designs will be considered new only if they haven’t been published in Israel or outside of it. The previous law only required that the design is new in Israel (unless proven that it was published online in certain terms).

  • Statutory Damages

Another addition to the existing law are the provisions stating that the court is authorized to award statutory damages for up to ILS 100,000 (about 28,000$ US) per infringement. This is another modernizing change as statutory damage for designs was not addressed in the existing Patents and Designs Ordinance.

When considering statutory damaged the court may take into account considerations such as the scope and severity of the infringement, the damages caused to the plaintiff, the gain acquired by the defendant etc.

  • Designs Created by the Employee and Work Made for Hire

Under the new law the rights to a design that was created by an employee executing its duties or when using his employer’s resources will be owned by the employer.

Similarly, all rights to a design that made for hire under a commissioned work will be owned by the person who commissioned it. However, these exceptions to the rule (i.e., the rights to a design belong to the designer) stand only when there is no other agreement between the parties.