Vans’ Old Skool skate shoe was one of the hottest shoes of 2018. Thanks to a rise in demand for nostalgia-inspired fashion, an all-encompassing embrace of sneakers for work and play, Van’s accessible price points (its Old Skool sneakers will set you back $60), and the 50-year old Southern California-based company’s “authentic connection to youth culture,” per FIT fashion professor Elena Romero, Vans’ sales have surged, including a 26 percent rise in sales for Q2.
As the company embarks on a 5-year plan to reach over $5 billion annual revenue by 2023, its sneakers have become a hot target for copycats. According to a strongly-worded new lawsuit that Vans filed against Primark in a federal court in Brooklyn, New York, the fast fashion retailer has, since August 2017, been “offering for sale and selling footwear products … [that] are calculated and intentional knock-offs of Vans’ footwear products that deliberately incorporate distinctive elements of the Vans Trademarks and Trade Dress.”
Vans notes that “over the past nearly 40 years, tens of millions of pairs of shoes with Vans’ distinctive trademarks and trade dress have been sold in the United States.” (Note: trade dress, a type of trademark protection, extends to the configuration (design and shape) of a product itself).
In particular, it states that its “Sk8-Hi Shoe has continuously featured a combination of distinctive elements, including: (1) the Vans Side Stripe Trademark, in contrasting color to the shoe upper; (2) a white rubberized midsole; (3) a contrast line around the top edge of the midsole; (4) a textured toe box outer around the front of the midsole; (5) padded corrugated ankle collars; and (6) visible stitching, in contrasting color, including where the lace bracing meets the vamp, separating the individual padded ankle collar corrugations, and bisecting the Vans Side Stripe Trademark; all of which combine to form strong enforceable trade dress.”
The purchasing public, per Vans, “has come to immediately and unmistakably associate the Old Skool Trade Dress with Vans,” which is why it is particularly damning – and confusing for consumers – that “despite Primark’s knowledge of Vans’ intellectual property rights in and to the Vans Trademarks and Trade Dress and Vans’ strong objection to Primark’s sale of the Infringing Products … that Primark is engaged in designing, manufacturing, advertising, promoting, selling, and/or offering for sale apparel, footwear, and accessory products for men, women, and children bearing logos and source-identifying indicia that are studied imitations of Vans’ trademarks.”
Beyond “deliberately incorporating distinctive elements of the Vans Trademarks and Trade Dress, Primark has even gone so far as to name its Infringing Products the ‘Skater’ low-tops and ‘Skate high tops’ in a blatant attempt to suggest a connection with Vans’ products that bear the Vans Trademarks and Trade Dress,” per Vans. The result has been that “consumers have begun referring to Primark’s Infringing Products as ‘fake Vans’ or ‘Primark Vans,’ including posting photos of the Infringing Products on social media platforms such as Instagram under the hashtags #fakevans or #primarkvans.”
And more than just consumers posting about the copycat shoes on social media, Vans alleges that “Primark enlists endorsers and influencers to promote its products, including the Infringing Products, via social media platforms.” Those influencers, Vans states, “function as undisclosed paid spokespersons,” and Primark’s failure to ensure that “the influencers’ roles as paid spokespersons [is disclosed to consumers] materially affects the credibility consumers attach to the promotional videos and reviews of the Infringing Products.”
With the foregoing in mind, Vans is suffering from “a likelihood of confusion and damage to [its] reputation,” in large part because “the Infringing Products [are of] inferior quality and cheaper construction.” As such Vans is seeking monetary damages, including “any and all profits derived by Primark from the sale or distribution of infringing products,” as well as injunctive relief, which would bar Primark from selling any “copy, reproduction, colorable imitation, or simulation of, or confusingly similar to any of Vans’ trademarks, trade dress, names, or logs, including, but not limited to, the Vans Trademarks and Trade Dress.”
*The case is Vans, Inc. and VF Outdoor, LLC. v. Primark Stores Ltd.; Primark Limited; Primark US Corp., 1:18-cv-07214 (E.D.NY).