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24 May 2019Patents

Steve Madden and YSL settle footwear dispute

Fashion brands Steve Madden and Yves Saint Laurent (YSL) have settled their dispute over shoes.

On Tuesday, May 21, the competitors jointly filed to dismiss, with prejudice, their design patent infringement and trade dress suit at the US District Court for the Southern District of New York.

The dismissal comes less than a month after Judge Valerie Caproni dismissed two of YSL’s counterclaims against Madden.

Back in August 2018, Madden filed a strongly-worded lawsuit against YSL in a pre-emptive strike against the French company, alleging that YSL had threatened to sue Madden and at least 13 of its stores for design patent infringement and trade dress violations.

Madden claimed the allegations were “absurd” because of the clear differences between its ‘Sicily’ sandal (a flat shoe) and YSL’s design patent (US number D607,187), which covers a high-heeled shoe.

The suit also claimed that YSL had alleged breaches of its trade dress rights in its ‘Tribute’ flat sandal.

In September last year, YSL responded with a counterclaim, accusing Madden of trademark infringement and counterfeiting, patent infringement, false designation of origin and unfair competition.

“The acts of the counterclaim defendants [Madden] are calculated to confuse and to deceive the public and are performed with full knowledge of counterclaim plaintiffs’ [YSL] rights,” said the counterclaim suit.

Steve Madden has found itself subject to other suits over shoe designs over the past few years.

In September 2017, JPT Group, which owns the ‘ Bernando’ shoe brand, accused Madden of copying patented designs on a range of sandals, “rather than undertaking its own independent development”.

Earlier that year, in June, Valentino took Madden to court over purses and strap designs, accusing the brand of copying Valentino’s ‘Double purse’ design and a ‘Camubutterfly strap design’, which is a handbag strap that looks like a guitar strap with a butterfly design.

AirWair, a subsidiary of footwear brand Dr Martens, has also sued Madden over trade dress infringement. According to the claim, the copying had been a “systematic and deliberate” attempt to trade on the “popularity and distinctive appearance and design” of Dr Martens’ footwear.

This story was first reported by blog The Fashion Law.

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More on this story

Trademarks
1 March 2017   AirWair, a subsidiary of footwear brand Dr Martens, has kicked out at a rival in a trade dress infringement lawsuit, filed yesterday.
Copyright
6 June 2017   Steve Madden, a fashion company, has landed itself in hot water with rival Valentino over purses and strap designs.