The well-known footwear brand Vans has recently taken the British retailer, Primark, to court for allegedly selling ‘intentional copies’ of two of their iconic trainers.
Vans had first initiated to settle the matter amicably, but they discovered that the British retailer was still selling the shoes in America. The lawsuit that has been filed in a New York Federal Court, alleges trademark infringement, unfair competition and false advertising.
The first product in contention is Vans’ Old Skool trainers, which cost £55. Primark is selling a pair that are eerily similar, with a similar white side stripe and piping along the edges, just for £8. In the picture below, the Vans shoe is on the left and the Primark Version is on the right.
Primark is also accused of stealing the Sk8-Hi shoe design, which is a high-top trainer with the classic stripe, piping and waffle-patterned sole and retails at £65. The similar Primark design costs £12. In the picture below, the Vans shoe is on the left and the Primark version is on the right.
The lawsuit states that customers have started calling Primark’s trainers as ‘fake Vans’ on Twitter and Instagram. Vans stated in their submissions that the Side Stripe Trademark’s prominent placement and often contrasted colour make Vans’ shoes immediately recognisable to consumers even at far off distances. They went on to call the Primark shoes ‘calculated and intentional knock-offs of Vans’ footwear products’ that were designed to confuse the purchasing public. They further stated that Primark’s choice of name for their products were evidence of stealing. Primark used the names, ‘Skater low tops’ and ‘Skater high tops’, in a blatant attempt to suggest a connection with Vans’ products that bear the Vans trademark and trade dress, including the Vans’ Old Skool Shoe and Sk8-Hi Shoe.
Vans claims to be the prior user of the trademark, since the 1970’s, whereas the clothing brand Primark has been selling copies of their trainers since 2017 despite being requested to cease and desist from doing so in January 2018. It has been reported that Primark disagrees with all of the allegations against them and plans to defend their position.
The first and the most quintessential question which arises here related to the scope of IP protection in the fashion industry. Fashion brands are not immune to counterfeiting. It is easier for the counterfeiters to copy fashion products and clothing because they are relatively simpler to manufacture as compared to the hi-tech devices. Also, they can be sold with a high mark-up owing to the reputation or goodwill associated with a well-known brand. In order to avoid the menace of counterfeiting, where the counterfeit product incorporates a well-known brand name, trademark enforcement is the best and most effective tool. Fashion brands register their house brand name and key sub-brands. Some of the leading luxury brands have been vigilant to safeguard their shape, colour, patterns, cuts, style, etc. For example, Christian Louboutin has trademarked red soles of their shoes. He has also sued Zara for infringement.
Indian scenario: Fashion industry is one of the fastest growing industries in India especially after some Indian designers have earned respect and recognition of other nations. However, the growing fame comes with certain vulnerability erupting from the scope of infringement by other domestic or even international designers. Famous Indian designers such as Anita Dongre, Anju Modi, Gaurav Gupta, Payal Singhal have gone a step ahead to register their garments and textile fabrics as Designs. Leading Indian footwear brands such as Relaxo have also protected their products under the design regime safeguarding the trade dress to a further extent. Fashion fraternity in India is slowly getting the hang of intellectual property for their creation.
In the matter ‘Pranda Jewellery Pvt. Ltd. And Ors. v. Aarya 24 kt and Ors’1 .,it was observed that what was produced by plaintiffs’ with use of artistic work contained in original drawings is a reproduction in a particular material, namely, in gold plate and in a particular form, namely, a three-dimensional form. What was produced was artistic work itself. Any imitation of the images in gold plates was clearly violative of plaintiffs’ copyright in them.
In the matter ‘M/S Sabyasachi Couture v. Anil Kumar Batra & Ors2 .’, the defendant who is the founder of the famous South Delhi store, ‘FRONTIER RAAS’, had replicas of the garments of the designer Sabyasachi at the said store which was also using the name ‘Sabyasachi’ in their couture line. The case was observed to be a well-found instance of infringement where the defendant was ordered to undertake not to possess any copies of the plaintiff’s subject designs and also not to misuse their trademark ‘Sabyasachi’ in any manner whatsoever.
Designer Christian Dior settled plagiarism dispute with Indian design studio, People Tree, through an out-of-court settlement, wherein People Tree had accused the French luxury brand of plagiarising one of its block prints in January 2018.