Why Converse is suing 31 companies

The popular shoe company Converse (now owned by Nike) recently filed lawsuits against retailers and manufacturers, who it alleges have been making counterfeits of its product. If successful in its action, the impact on imports and exports of clothing and footwear will reverberate around the world.

An icon

The Converse sneaker has been kicking around for over 100 years – we all own a pair, don’t we? And the famous Chuck Taylor shoe design has been ever present in popular culture from movies such as Grease and Rocky to bands such as Nirvana. Converse claims to have sold over a billion pairs worldwide – it is a fashion icon.

‘Shoeing’ off the competition

The shoe is recognisable in the United States for its midsole design (referring to the Chuck Taylor ‘toe bumper’ and ‘toe cap’) and its outsole design (referring to the diamond pattern on the sole of the shoe).

Increasingly concerned about protection of its intellectual property and the impact of counterfeits on the brand’s distinctiveness, Converse is ‘putting its foot down’ and has taken action filing:

separate law suits in the U.S District Court for the Eastern District of New York against 31 alleged infringers, including the Australian company Hitch Enterprises Pty Ltd¹; and
a complaint at the International Trade Commission against the same alleged infringers for unfair trade practices relating to importing shoes that infringe the Converse designs.²

If the shoe fits…

To succeed, Converse must prove that the defendants sold confusingly similar products that led the public to believe their products were manufactured by Converse.³ Whilst Converse is clearly an icon of the current era, it is not necessarily straightforward for claimants in the fashion industry to succeed in these types of claims.

Infringing shoes?

This may be particularly difficult for Converse as the designs could very easily be regarded as functional and therefore not necessarily protectable. For example, the rubber toe bumper and cap as well as the outside design prevent wear and tear and provide foot protection. In the alternative, the shoe may be regarded as so well known that the Chuck Taylor shoe design has taken on a secondary meaning and thus the shoe may be protectable despite its functionality.⁴

What’s at stake?

Converse may face a great loss if its claims do not succeed, including a loss of sales and dilution of its brand. Alternatively, if successful, Converse could be entitled to recover significant damages as well as injunctive relief to prevent imitators from selling its shoe designs. A judgment in Converse’s favour may deter imports in other markets too. There is much at stake for Converse. We wouldn’t want to be in their shoes right now.

Trade mark infringement: Louboutin sees red

¹15 U.S.C § 1114, 15 U.S.C. § 1125(c) & 15 U.S.C. § 1125(a)
²19 U.S.C. § 1337 et seq
³Lanham Act, 15 USC § 1114
⁴Christian Louboutin, S.A. v Yves Saint Laurent Am. Holding, Inc., 2012 WL 3832285 (2^nd Cir. 2012)