Eliya Inc., a wholesale footwear company known for its BERNIE MEV shoes, and Skechers, an American lifestyle and footwear company, are involved in a legal battle over shoe design patents.
According to an article by JD Supra, Skechers sent a cease and desist letter to Eliya in which it accused Eliya of infringing two of its shoe design patents, specifically U.S. Patent Nos. D821,724 and D810,412. Eliya responded by filing a declaratory judgment action against Skechers in the U.S. District Court for the Southern District of New York.
The shoes at issue have a similar shape and a distinctive bow situated on top of the shoe. While the shoes are not identical in appearance, identicality is not required for a finding of infringement of a design patent under U.S. law. A copy that is ‘substantially similar’ can suffice to infringe a design patent. Therefore, Eliya’s version of the shoe does not have to be exactly the same as Skechers’ version in order to infringe Skechers’ design patent.
Eliya is claiming Skechers’ design is not eligible for a design patent for two reasons:
Eliya claims the bow design is functional if the bow serves to tighten or loosen the shoe, similar to the way shoelaces might; and
Eliya claims the bow design is not novel – for example, PUMA had already been selling a shoe with a bow design in advance of Skechers filing its patent application.
Authors: Jaclyn Tilak and Anna Condon, 2018/2019 Articling Student-at-law
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