Strong assertive sneakers, Sneaker design disputes

 

The era of ‘sneakers with strong individuality’ is more important than ever

  When you choose sneakers, what do you consider most important? There are various factors to consider, such as comfort, price, design, and brand. However, with the development of SNS, the perception that ‘consumption or taste represents me’ has become stronger among consumers. As a result, ‘visibility’ such as design or brand elements have a stronger effect on purchasing decisions these days.

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That sock-like shoe, Balenciaga is not the only one?

  A few years ago, In Korea, sneakers that looked like socks swept the market. It was the ‘Speed ​​Series’ introduced by the luxury brand Balenciaga. The item led the ‘socks sneaker’ trend with its one-piece design made of knit material, and it is still being released in various lineups to this day.

Balenciaga's 'Speed' series released in various designs to date
<source: https://www.balenciaga.com/ko-kr>

  The design that makes this product recognizable from 100 meters away as 'Oh, that's Balenciaga' is the unique knit material and the bold and masculine line of the sole, so Balenciaga has registered this part as a design IP and is protected.

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Balenciaga's registered design patent, D968055 S1

  Of course, it was so popular and expensive that many later products with similar images appeared. The representative SPA brand ZARA introduced various sock sneaker lines and gained popularity. Although Balenciaga focused on modifying the sole part protected by the design rights, the overall feel was similar to that of a sock sneaker, so it was once nicknamed 'Zapidrunner' (similar to Speedrunner).

Socks sneakers models released by ZARA
<source: zara.com>

  There are countless cases where similar designs have become issues. There are also many cases that do not stop at issues and lead to lawsuits and disputes. Let's take a look at a few of them.

Hermes and Sketchers' sneakers, do they have similar soles?

  Even Hermes, a high-end luxury brand, could not avoid lawsuits. The 'Éclair' and 'Envol' sneakers released by Hermes in 2022 attracted attention for their uniquely shaped soles. The unique wave shape, like waves crossing each other, combined with Hermes' signature color, orange, made the design even more striking. However, this design became the subject of a lawsuit.

(left) Hermes 'Envol' and 'Eclair' <source: Hermes.com>
(right) Skechers 'Go Walk' series 'Massage Fit' <source: skechers.com>

  Skechers, an American outdoor brand and famous for running shoes, claimed that this Hermes design infringed on two design patents (D925183, D965263) for the ‘Massage Fit’ wavy sole of its Go Walk walking shoes.

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Comparison of Hermes and Skechers design drawings

  In fact, Skechers' registered designs D925183 and D965263 describe the characteristics of the sole bottom in the claims, and the registered drawings also express the sole part in solid lines and specify the scope of protection. In response, Skechers claimed that Hermes' shoe soles were "substantially the same" as those of its own products and requested monetary damages and an injunction against infringement. Fortunately, this lawsuit (1:22-cv-08862), which began in October 2022, ended in May 2023 when Skechers and Hermes reached a confidential settlement and the plaintiff Skechers voluntarily dismissed the lawsuit.

Nike VS BAPE, a long-standing dispute

Nike Dunk Low and BAPE SK8 STA
<source: lesitedelasneaker.com>

  Nike is also in a lawsuit with Japanese street fashion brand BAPE (A Bathing Ape). BAPE, founded in 1993, has gained widespread popularity not only in Japan but also in North America and Europe, and has become recognized as a brand that symbolizes hip-hop. There are many factors that led to BAPE's fame, but among them, sneakers with designs that seemed to pay homage to Nike were also loved by many. That 'similar feeling' became a problem.

Street fashion brand BAPE
<source: sneakernews.com>

The beginning of the plagiarism controversy (2009)

  Nike seems to have sought a friendly solution to the plagiarism controversy that had been going on since 2005 (when BAPE began selling in the US), by proposing a licensing agreement for the 'BAPE STA' model, which was controversial for being similar to the Air Force. However, after several years without much progress, the scale of the infringement seems to have grown rapidly around 2021, and in 2023, Nike finally responded with a lawsuit, escalating the conflict between the two companies.

Nike Sues BAPE (January 2023)

  Nike filed a trademark infringement lawsuit (1:23-cv-00660) in January 2023, claiming that BAPE's flagship sneakers imitate Nike's iconic designs, including the Air Force 1, Air Jordan 1, and Dunks.

  Nike’s position can be understood if you look at the actual trademark registrations and actual comparison photos (below) included in the actual submission documents.

Nike and BAPE product comparison submitted by Nike in the lawsuit
<source: vitallaw.com>

BAPE refutes lawsuit

  However, BAPE bravely(?) refutes Nike's lawsuit. BAPE's attorney pointed out that Nike's claims did not sufficiently understand its sneakers, the BAPE STA, and several trade dress elements, and rejected the request to stop trademark infringement.

*Trade dress is the characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers. Trade dress is an aspect of trademark law, which is a form of intellectual property protection law. (Wikipedia)

Nike opposes BAPE’s motion to dismiss

  However, Nike once again emphasized the validity of its existing protected trademark rights and the similarity of the BAPE model. They opposed BAPE’s motion to dismiss, arguing that the submitted evidence was sufficient from a trade dress protection perspective.

End of lawsuit, Nike and BAPE reach agreement (March 2024)

  The court sided with Nike and determined that Nike provided strong grounds for the validity of the registered trademark rights. Nike’s registered trademark was deemed sufficient to establish the characteristics of the product’s appearance, and BAPE’s argument that a more specific lawsuit was needed was dismissed.

Decision of Nike and BAPE lawsuit
<source: vitallaw.com>

  With this, Nike's trademark infringement lawsuit against BAPE that has been ongoing since January 2023 has come to an end. BAPE has agreed to modify the design of BAPE STA, which is similar to Nike's Air Force 1, and Sk8 STA, which is similar to the Dunk, and to stop selling BAPE STA Mid, Court STA, and Court STA High models.

Surviving as a leader in the fashion industry

  So far, we have looked at several cases of disputes surrounding sneaker designs. In addition to the cases covered today, there are countless cases of theft, copying, disputes, and lawsuits in the fashion industry. In the fashion industry, it is not easy to prevent and judge disputes because the trend cycle is short, making it easy to imitate and produce counterfeit products, and the criteria for plagiarism can be ambiguous. Also, the line between plagiarism and re-creation is blurred due to the concepts of ‘homage*’ or ‘parody.’ Therefore, these cases are important references in that they reflect the trends of the time and change the public and industry’s perception of intellectual property rights. Of course, it can also be a way for ordinary people who are unfamiliar with IP to consume more healthily. We, WIPS will continue to diligently tell you about design dispute stories that will continue as long as fashion and trends exist.

*Homage: It’s a show or demonstration of respect or dedication to someone or something, sometimes by simple declaration but often by some more oblique reference, artistic or poetic. The term is often used in the arts, where one author or artist shows respect to another by allusion or imitation. <Source: Wikipedia>

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