QLD Intellectual Property Law - Legal Risks of Product Replicas?

[steve92]

Hi,
I'm trying to understand the legal risks behind drop-shipping 'Inspired/Replica' products such as shoes. I'll give you an example.

If a China supplier creates a shoe that looks like a name brand one, the design/shape/style is the same but it doesn't have the logo or brand on it anywhere. There could be small differences when viewing the real vs replica item in person but from pictures it will look the same.

Can the brand still take action based on the fact that it visually looks the same even though it doesn't have the branding on the shoe. Also if I was to sell these by NOT claiming they are the "brand" shoes, if i say they are custom inspired products and not say any brands or try to imply they are the brands, does this protect me in any way? Or is it simply since they look the same the brand can take action to get me to remove my site and even sue?

The supplier is also able to list these specific shoes on eBay. eBay hasn't removed their listing and there are multiple like it so does that show that they are allowed to sell them? Or has eBay just not looked into their listing yet perhaps?

Summary:
- Want to have a website, me being the middle man, I get the orders to provide payment to a supplier, and they ship out the shoe
- Shoe looks the same as branded one, but doesn't have any logo/brand on it
- I will not claim they are replica/copy/or genuine. I will state they are an inspired custom created shoes as this is what the supplier states

But does none of that really matter at the end of they day under Intellectual Property Law? As in can the brand can still sue based on the fact it looks the same and people would be buying them because of that reason?


Thank you

 

[CathL]

It doesn't sound like trademark infringement as there's no logo or brand on the shoe, but perhaps there could be an argument that its conduct that is likely to mislead or deceive if you have buyers who buy the shoe because it looks the same as the branded one and so they think it is? You might be best getting legal advice from an intellectual property lawyer before you start trading.

 

[AnnaLJ]

Hi Steve

There are a few additional issues here that haven't yet been raised. I don't necessarily believe that an action would be possible for misleading and deceptive conduct as suggested above, as a reasonable purchaser may be able to see that the shoe is not branded the same as the original shoe and also, by virtue of the price and the store its purchased from, would reasonably be able to deduce that it is not a shoe from the more expensive brand. But if you are unsure on this point you might consider calling the ACCC or consumer affairs in your state.

Firstly, the design of a shoe is able to be registered and protected under design law (in Australia, for example, this would be the Designs Act 2003). There are similar laws in other countries, so whether or not these particular designs have been registered and protected is a matter of fact and something you would have to look into for yourself further. To see if they are registered in Australia, you can look on the IP Australia Website: Designs | IP Australia This will not, however, give you information on whether they have been registered in other countries. If these shoes you intend to import are substantially similar in overall impression to a registered design, then the original designer could have an action against you for design infringement.

Secondly, even if the shoe design has not been registered, the original designer may have common law action under 'passing off', if they believe that your shoe designs are so similar that they represent a connection between your brand and theirs or an implication that your shoes have been produced and sold with their permission.

I wouldn't use eBay's lack of action as evidence that these shoes are legally able to be sold. It's difficult for eBay to be able to look through every single product posted and they would likely only be alerted to similar designs if a user of the website made a complaint.

In summary, you could absolutely get some proper legal advice as to how to import and sell these shoes with reduced risk, but coming from a fashion business background myself I find it really disappointing when brands rip off the designs of other brands and have personally been involved in suing many brands who do this (with some huge settlement figures received). The best course of action would be to pursue a more ethical supplier who does not make a living by ripping off the designs of other brands.

Thanks