In 2000, Jennifer Lopez debuted the much-publicised and spoken about Versace jungle pattern dress at the Grammy Awards. The dress offered surprisingly little coverage for a garment that comprised so much material. Some 20 years on, Versace is suing a company called Fashion Nova for selling a jungle pattern look-a-like. Versace’s complaint is that Fashion Nova’s dress will cause confusion, in the sense that the public will assume that it is connected with Versace. Alleged similarities include the neckline, the high-cut leg slit and the circular brooch. The case is based on trade marks, trade dress and copyright.

Versace has had issues with Fashion Nova in the past: Fashion Nova apparently operates at the lower end of the market, with its dresses generally selling for under USD100 – the dress that is in issue here in fact costs a mere USD69.99. Versace, as expected, operates at the other end of the scale, and its dresses tend to go for over USD1000. You can see why the company might be miffed! It will be interesting to see what the Californian court makes of it all.

The notion of having intellectual property (“IP”) rights for a dress may seem strange to some. But in South Africa, there would certainly be a number of possibilities in a case like this. I’ll start off by looking at the rights and remedies that don’t require registration.

Passing off

This well-known remedy is aimed at preventing consumer confusion. In order to successfully bring a passing off claim, you need to establish that your trade mark or get-up has a reputation or goodwill, that a competitor is using a confusingly similar trade mark or get-up, and that there is a likelihood of confusion. In this particular case, the get-up would effectively be the appearance of the product. Passing off cases can be tricky, and compelling evidence of turnover and likelihood of confusion needs to be submitted.

Unlawful competition

Passing off is a sub-set of the broader category of unlawful competition. Even if there isn’t a significant reputation it may still be possible to bring a case of unlawful competition. The old cases tell us that there might be unlawful competition where there is conduct that is “unfair and unjust”, where there is a “wrongful interference with another’s right as a trader”, or where there is a “deliberate misappropriation of a business asset which was acquired by another’s skill and industry.”

Copyright

In South Africa, copyright is not registered. It is conceivable that a dress might enjoy protection as an artistic work – the definition includes both drawings and works of artistic craftsmanship. The owner of the copyright has the exclusive right to reproduce the work in any manner or form.

There is, however, an important exception. This provides that the copyright in an artistic work, of which 3D reproductions have been made available to the public, is not infringed if anyone else makes 3D reproductions of the authorised reproductions, provided that the authorised reproductions have a utilitarian purpose and are made by an industrial process.

This is quite a mouthful but it basically means that there would be no liability if Versace’s jungle pattern dress is made by an industrial process, and if its purpose is utilitarian (unlikely, I think). It could make for an interesting case though.

Relying on registered rights is always preferable. The options here would appear to be as follows:

Designs

A design registration might be possible. In South Africa, there are two types of design; aesthetic designs and functional designs. For a dress like this, an aesthetic design would be the most obvious route – the legislation defines an aesthetic design as one involving “features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof.”

The big issue with designs, of course, is novelty. In other words, you have to register before you go to market. The test for novelty is that it must be “new” and “original”.

Trade marks

A trade mark registration would be an option. With trade marks, novelty isn’t an issue, although distinctiveness is. There is a specific provision that says that a mark cannot be registered if it “consists exclusively of the shape, configuration, colour or pattern of goods where such shape, configuration, colour or pattern is necessary to obtain a specific technical result, or results from the nature of the goods themselves.” The jungle pattern dress would surely overcome this hurdle!

Ilse du Plessis Executive IP [email protected] +27 82 411 7547