The Los Angeles District Court has dismissed a lawsuit filed by K-Swiss against Puma over its Dolton shoe design. Puma filed its own trademark infringement lawsuit in the District of Massachusetts and the case will continue to be heard there. K-Swiss sought a ruling that its Dolton shoe design did not infringe Pumas “Formstrip Trademarks,” which run along the side of the shoe, according to a statement from the law firm Milord & Associates. Two business days after K-Swiss filed its lawsuit in Los Angeles, Puma filed its own trademark infringement lawsuit in the District of Massachusetts and filed a motion to dismiss, transfer, or stay the Los Angeles action.
In its decision, the Los Angeles District Court declined to exercise jurisdiction over the matter even though under the “first to file” rule, K-Swiss action preceded Pumas Massachusetts lawsuit: “the rule is a flexible one and the Court may, in its discretion, rely on equitable grounds, such as when the filing of the first suit evidences bad faith, anticipatory suit, or forum shopping, to determine whether to depart from the first to file rule.”
In a March letter to K-Swiss, Puma threatened a suit of its own if K-Swiss didn't stop selling and marketing the Dolton shoe, which the German firm argued copied its trademarked “formstrip” design seen on the side of most of its shoes. The K-Swiss Dolton features an eyelet strip, which runs in a color block down the side of the shoe and to the sole. The Dolton was introduced in late 2008, the suit said, and the two former Puma employees were hired by K-Swiss after the Dolton was designed.