Nike Inc. recently sued Japanese streetwear company, A Bathing Ape (BAPE), in the Southern District of New York, alleging that BAPE’s business model revolves around offering “near verbatim” copies of Nike’s iconic Air Force 1, Air Jordan, and Dunk designs, for which it has registered and common law trade dress rights.

Founded in 1993, BAPE initially sold apparel in Japan. In 2005, BAPE began selling footwear in the United States. According to the complaint, BAPE’s infringing activity was originally de minimis and too inconsistent to warrant a lawsuit. Nevertheless, Nike contacted and met with BAPE in 2009 to “address BAPE’s pirating of Nike’s iconic Air Force 1 design and to protect Nike’s intellectual property rights.” According to Nike, following the meeting, BAPE “significantly and materially diminished its US activities” and in 2010 closed all but one of its U.S. stores and shifted its focus to its Chinese and Taiwanese marks. Moreover, BAPE redesigned its footwear in 2016.

However, according to Nike, BAPE drastically increased the volume and scope of its infringement in 2021. On February 6, 2021, BAPE re-introduced the original, infringing design as well as several other styles which allegedly copied Nike’s designs:

BAPE also rapidly expanded its physical presence in the US, opening new stores in New York City, Los Angeles, and Miami, and began offering its sneakers nationwide online. BAPE also collaborated with prominent third parties, like a MARVEL-co-branded sneaker, which Nike alleges caused additional confusion regarding Nike’s affiliation with such third parties. On August 24, 2022, Nike sent BAPE another letter demanding that BAPE cease its activities. When BAPE refused, Nike filed suit.

BAPE will undoubtedly argue that Nike waited too long to file suit under various defenses such as laches, acquiescence, and estoppel. However, in the complaint, Nike explains that prior to 2021, BAPE’s infringements were too insignificant to warrant a lawsuit. Nike states “[f]or fifteen years, the presence of BAPE’s infringing footwear in the U.S. resembled the famous Whac-A-Mole arcade game: infringing products appeared and then disappeared from the U.S. market for years; BAPE opened stores in the U.S. and then shuttered them a few years later; and BAPE was purchased by a Hong Kong fashion conglomerate that shifted BAPE’s focus to markets outside the U.S. However, BAPE continues to escalate its infringing activity and Nike therefore is forced to bring this lawsuit to stop BAPE’s unauthorized use of Nike’s trademarks.”

Nike seeks injunctive relief to bar BAPE from continuing to sell the allegedly infringing designs, and monetary damages, including an award of three times the amount of compensatory damages and increased profits, statutory damages, and punitive damages.

If the case proceeds to a ruling on the merits, it will be interesting to see how the court addresses Nike’s approach to enforcement and arguable delay in filing suit. Do trademark owners need to take an aggressive approach to stomp out minor infringements at the start, or can they take a more nuanced approach as Nike did here without that decision coming back to haunt them in the future?