Vans targets Primark over its Old Skool and Sk8-Hi shoes
Skateboarding shoe maker Vans has filed a trademark infringement suit against Primark for selling what it describes as “calculated and intentional knock-offs” of its famous Old Skool and Sk8-Hi shoes.
The complaint, which was filed on Tuesday, December 18, at the US District Court for the Eastern District of New York, alleged that Primark has been selling products which violate Vans’ trademarks in its retail stores in New York.
Vans, which is based in California, stated that it owns trademarks for both its “side stripe” (US number 2177772) and waffle outer sole (US number 5418305). It described its Old Skool and Sk8-Hi shoes as “immediately recognisable to consumers even at far-off distances”.
The shoe maker said that both products have “distinctive identifying elements” which make up Vans’ trade dress, including the side stripe and waffle outer sole, as well as a white rubberised sole, a textured toe box around the front of the white midsole and visible stitching in contrasting colour.
Vans alleged that Primark designed, manufactured, sold and promoted imitations of both the Vans Old Skool and Sk8-Hi shoes in its UK stores in August 2017. In September 2017, Vans notified Primark of the infringement, and after correspondence between counsel for both retailers, Primark ceased the display, sale and distribution of the infringing products, the filing said.
According to Vans, in August 2018, Primark once again started selling imitations of Vans’ shoes, but this time in the US—specifically its retail stories in New York.
The shoe company described the allegedly infringing products as “calculated and intentional knock-offs of the Sk8-Hi and Old Skool shoes”, which were designed to confuse the purchasing public by “deliberately incorporating distinctive elements of the Vans’ trademarks”.
Vans alleged that Primark took advantage of the shoes’ popularity. In the filing, it said that the Old Skool model (released in 1977) and Sk8-Hi brand (released in 1978) had exploded in popularity in recent years with the general public, including high-profile fashion designers, musicians and celebrities.
Additionally, Vans said Primark’s products were named “Skater” low tops and “Skate high-tops” which has led to consumers referring to the shoes as “fake Vans” or “Primark Vans” on social media.
The shoe brand also accused Primark of false advertising, claiming that the retail chain enlisted influencers to promote its shoes and paid them to review and publicise Primark products. It further claimed that Primark does not require its influencers to disclose that they are compensated by Primark for promoting its products.
Vans is seeking an injunction against Primark, triple profits and damages, as well as an order to destroy all allegedly infringing products.
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