On October 18, the sneaker company Skechers filed a lawsuit in New York federal court against luxury designer Hermès for infringement of two design patents that Skechers holds in relation to the sole of its “Massage Fit” sneakers.
Skechers’ complaint alleges that Hermès is infringing these patents by way of its Éclair and Envol sneaker styles. Skecher’s claims that the Hermès shoes—which retail for about $900 a pair— have “substantially the same sole” as Skecher’s “Massage Fit” sneakers which embody the Skechers’ patents.
About Design Patents
Design patents are a popular form of intellectual property among footwear makers because they can provide up to 15 years of strong protection in ornamental and non-functional aspects of a manufactured good. (Design patents protect ornamental creations, while more commonly-known utility patents protect rights in an invention.)
Neither Skechers nor Hermès is a stranger to the courtroom.
This is not the first time that Hermès has been accused of design infringement. The maker of Crocs sued Hermes in 2012 over a design patent related to Crocs' popular clog sandals, and in 2015, Birkenstock sued Hermès alleging that Hermès’ Oran Sandals copied Birkenstock’s iconic two-strap sandal design. (Both cases were settled out of court.) And it’s not just shoes they’ve been accused of copying: in 2017, furniture company Ligne Roset sued Hermès alleging that Hermès’ Fauteuil des Aeolians chair infringed designs belonging to the French furniture-maker.
Skechers' history
Skecher’s previously sued Steve Madden and Reebok to enforce its ownership in a design patent in its “Go Walk” sneaker. And it sued sneaker maker Brooks for its use of the numeral “5” on sneakers that Skecher’s contended infringed on its iconic, and trademarked “S” logo. (see image above) Skechers is no stranger to being on the other side of the courtroom aisle, though, having itself been accused of infringement by the likes of Nike, Adidas, and Converse.
Shoe companies sue, and get sued, a lot.
Skechers' lawsuit against Hermès is just the latest example of a luxury brand being accused of infringing another company's design patent, and while this case will likely also be settled out of court, it should serve as a reminder that even ultra-luxury brands are not immune from accusations of infringement.
Take-Aways
Product design companies are advised to be on the offense and defense in this active arena. Playing defense, companies should assess their risk of liability in this area and take steps to avoid infringement claims— especially given the cost of litigation and the potential monetary damages at stake. On the flip side, companies have to play offense and vigilantly protect their own intellectual property, lest they lose sales—and revenue—to competitors making copycat-goods from misappropriated designs.
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