Converse also filed separate complaints against the Companies under s. 1337 of Title 19 of the U.S. Code – unfair practices in import trade at the United States International Trade Commission, which is empowered to stop counterfeit goods from entering the United States.
There were multiple allegations made by Converse, including: (i) trademark infringement; (ii) false designation of origin; (iii) unfair competition; (iv) trademark dilution; and (v) unfair business practices. This article will focus on exploring the potential claim of trademark infringement.
In the Complaints, Converse alleged that it owns rights in the shape of the midsole design adopted in their sneakers which is registered as a trade mark in the United States (the “Subject Mark”). The Subject Mark was registered in Class 25 (footwear). The registration of the Subject Mark specified that protection is conferred on the design of the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements to each other. The following images were highlighted by Converse in the Complaint filed against Skechers U.S.A. Inc. to illustrate the shape or design of the Subject Mark (left) and the shape and design of Skechers’ sneakers (right):
Trademark infringement: Converse’s claim
Converse claimed that the Companies were in contravention of ss.32(1), 43(a) and 43(c) of the Trademark Act of 1946, namely, the Companies used the Subject Mark and/or colourable imitation of the Subject Mark without the consent of Converse, leading to consumer confusion as to the origin, sponsorship, or approval of the Companies’ shoe products, which would constitute trademark infringement.
Trademark infringement: Hong Kong’s approach
S.18(5) of TMO clarifies the meaning of “use” by providing that a person uses a sign if he or she:
1. applies it to goods or their packaging;
Having considered the elements of trademark infringement in Hong Kong, next question is whether a mark consisting of the shape of a sneaker will be protected, in particular, as a shape mark.
shape marks in Hong Kong
Under Hong Kong laws, three-dimensional marks or shapes are registrable if they are capable of distinguishing the goods and services of one trader from another. To seek protection of a three-dimensional shapes mark, the following requirements need to be fulfilled.
Shape functioning as a trademark
Shapes which are not debarred from registration
1. shape resulting from the nature of the goods themselves;
In other words, elements of distinctiveness must be proven by a shape mark owner, i.e. that the public recognises the shape to be associated with the owner, and that it is confused to believe that the alleged infringer’s products is related to those of the mark owner’s, before a finding of infringement would be made. These are likely hurdles that Converse needs to overcome before succeeding in its claims in the US.
The law and procedure on this subject are very specialized and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.
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Published by ONC Lawyers © 2014