Jun 29, 2016

Converse Trade Mark Dispute Partially 'Chucked' Out

Converse, the manufacturer of the eponymous Chuck Taylor trainer, has been handed a mixed ruling at the US International Trade Commission (ITC).  The agency said that Wal-Mart, Skechers and New Balance did not infringe some trade marked shoe designs but may be liable for infringement of others.

In a decision handed down on 23 June 2016, the ITC kicked one Converse trade mark into touch but it also issued a general exclusion order banning shoes from entering the US that infringed two other Converse marks which were held to be valid.

Background

The cases related to the iconic Chuck Taylor style of trainers which are named after Charles Hollis "Chuck" Taylor an American basketball player and shoe salesman.  Converse first created the shoe in 1917.

The dispute began in October 2014, when Converse (which incidentally has been owned by Nike since 2003) sued 31 companies and rival shoe designers.

The brand claimed that trademark infringement had occurred and believed that each of the companies stole at least one of three trade marks: the stripes going around the shoe, the rubber toe bumper, and the toe cap. They added that the Defendants had been selling confusingly similar imitations in similar channels of trade, resulting in a likelihood of confusion for consumers.

Among the companies named in the lawsuits, many chose to settle early on in the case, including Ralph Lauren, FILA, and H&M. On the other hand, companies such as Walmart, Skechers and New Balance chose to defend their strikingly similar footwear. These companies were subject to the ITC ruling.

ITC Ruling

On June 23 2016, the ITC held that Converse holds two valid trade marks covering the outsole of the trainer but that certain parts of the shoe's look, including the rubber toe-band, toe cap and stripes do not share the same protection. This means that the retailers can continue to import and sell their shoes that look similar because their footwear does not have the diamond outsole which forms part of the Converse mark.

The ITC concluded that in relation to the claim made against Skechers' and their Twinkle Tows and BOBS, shoes even if the invalid marks held were valid these shoes would not infringe Converse's marks.  Commenting on the outcome Nike senior director Brian Fogarty said that:

"While we [Nike] do not agree with all of the ITC's findings, we feel confident our rights will be vindicated on appeal."

in: Case Law, News, Trade Marks

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