US shoe designer Antonio Brown, owner of the LVL XIII (Level 13) brand, accused luxury brand Louis Vuitton of launching “confusingly similar” trainers. His case may have been more successful had he relied on a design right, says Novagraaf's Theo Visser.

LVL XIII released a line of trainers (or sneakers, for US readers) featuring an eye-catching metal plate on the toe of the shoe in August 2013. The sneakers were immediately popular with rap stars, such as Chris Brown and Jason Derulo, and sold well. Louis Vuitton launched its ‘On the Road’ trainer in 2014. It too featured a metal plate at the end of the shoe, and LVL XIII brought a case of infringement against the luxury brand, arguing that the ‘On the Road’ footwear was “confusing similar” to its own, due to the inclusion of the characteristic rectangular metal plate. It further argued that Louis Vuitton was acting in bad faith by exploiting the goodwill in the LVL XIII trainers in an effort to mislead consumers. However, the New York court dismissed the case, finding in favour of Louis Vuitton.

To view images of the shoes click here

The metal plate is decorative, rather than distinctive
In dismissing the case, judge Paul Engelmayer ruled not only was there was no likelihood of confusion between the two designs, but also that evidence of bad faith had not been demonstrated.

Furthermore, the court found that LVL XIII’s metal plate design: “serves a primarily aesthetic function: making LVL XIII’s sneakers appear more enticing” and is a “product design feature, which is not inherently distinctive”. In order to succeed in its trademark infringement and bad faith action, LVL XIII needed to show that the metal plate functioned as a distinctive design and, therefore, served as a badge of origin for the brand in the minds of consumers. Engelmayer J also noted that there were other shoe brands in the market which contained similar metallic decorations.

Would an action brought on the basis of a design right have been more successful?
The case could have possibly ended more positively for Brown if he had relied on design law in his suit. In fast-moving industries such as fashion, design rights can provide a simple and cost-effective means to protect and enforce an innovative shape, appearance or ornamentation. The right protects the design feature – for example, its shape or appearance – rather than its function (Find out more about design rights).