Converse sues Chuck Taylor copies: Could it happen in Australia?
Wednesday, October 15, 2014/
Converse is cracking down on competitors that make shoes similar to its famous Chuck Taylors, filing lawsuits against 31 companies including Walmart, Kmart and Skechers in a New York court this week.
The shoemaker, which has been owned by Nike since 2003, says it has sold more than a billion pairs of the shoes, recognisable by their rubber-toe front and star design, but according to the New York Times, it has had enough of other shoemakers selling similar products.
Converse is suing the companies for yet to be specified monetary damages, claiming they have infringed its trademark over elements of the shoe’s design, including one or two black stripes and the rubber cap above the toe.
At the same time, Converse has also filed a complaint with the International Trade Commission to halt counterfeit copies of the shoes from entering the US.
“Our decision to bring these lawsuits is grounded in the basic principle of fairness, our well-established right and responsibility to protect Converse’s intellectual property, and our commitment to prevent consumer confusion in the marketplace” Converse chief executive Jim Calhoun said in a statement issued to SmartCompany.
“We welcome fair competition, but we do not believe companies have a right to copy the Chuck’s trademarked look”
Calhoun told the New York Times Converse has also sent out more than 160 cease-and-desist letters to companies it believes are infringed upon its trademarked design.
SmartCompany contacted Kmart but did not receive a response prior to publication.
John MacPhail, intellectual property, media and technology partner at Finlaysons, told SmartCompany it is unlikely Converse is motivated by money or necessarily interested in extracting royalties from the 31 companies.
“I don’t think it is about money, it really is about them trying to keep their brand exclusivity and cache,” he says.
MacPhail says it is likely a number of the defendants will choose to settle the case with Nike-backed Converse, especially smaller operators.
But he believes Converse has “a pretty weak case”, which would be even harder to stand up in Australia, as a large number of retailers have been producing and selling similar shoes for a long period of time.
“It’s pretty clear Converse has spent a lot of time in getting its trademarks right in the US but they haven’t really done the same in Australia,” he says.
MacPhail says trademark protection for product design, or ‘get-up’, is usually weaker in Australia.
While MacPhail says Christian Louboutin has a “limited trademark” on red soles for its shoes in Australia, dependent on the degree of contrast between the colour of the sole and the rest of the shoe.
Similarly, MacPhail says a bid by New Zealand winery Oyster Bay to trademark its label design failed after a group of larger wineries banded together to have its application for a trademark application of a whited-out Oyster Bay bottle rejected.
“There is an innate reluctance in Australia to accept get-up as a distinctive and trademarkable concept unless you are really famous for it,” he says.
*This article was updated at 3.37pm on Wednesday October 15 to include comments from Converse.