By Jessica Yun
Ultra-fast fashion juggernaut Shein has launched a countersuit against Australian online fashion store The Iconic in a legal battle over trademark infringement as local businesses grapple with the $100 billion behemoth that is aggressively stealing market share from retailers around the world.
The Iconic, which develops and designs the “Dazie” label in-house, launched legal action against Shein in November after two years of letters traded between their lawyers did not stop Shein from selling clothing under the name “Dazy”.
Shein is countersuing The Iconic, arguing the Australian-founded retailer doesn’t own the “Dazie” trademark.
But in documents filed to the Federal Court obtained by this masthead, Shein pointed to instances where other businesses had sold clothing under “Daisy” or similar names – such as “Daisy Clothing”, “Daisy Dance & Children’s Wear”, “Daizy Boutique” and “Daizy Nimbin” – as a trademark before The Iconic trademarked “Dazie” on December 18, 2017.
“Each of the following signs, Daisy [and] Daizy, is substantially identical with the Dazie mark,” Shein said in its statement of cross-claim.
“The Iconic is not the owner of the Dazie mark as at the priority date,” the documents stated. “The Dazie mark is liable to be cancelled under [the Trade Marks Act 1995].”
The Iconic has denied all Shein’s claims, countering that “Daisy” and its variations were not used as trademarks by those businesses or individuals, and denied Shein’s claim to any relief.
“The cross-respondent [The Iconic] is entitled to retain its registration of the Dazie mark by reason of its honest concurrent use of the Dazie mark,” the Sydney-based company stated in its defence document.
A spokesperson for The Iconic said it would not comment further as legal proceedings were ongoing.
“However, we will be continuing to protect and defend our trademark for our locally designed Dazie-branded apparel in Australia.”
The Iconic produces more than 10 exclusive brands, and began selling clothes under the Dazie brand in January 2018. It sent an infringement letter to Shein’s lawyers, Gadens, on August 2022 for selling clothing to Australians under the name “Dazy”, which The Iconic argues is “substantially identical or substantially similar to the Dazie trademark”.
The Australian retailer, represented by law firm Bird & Bird, is alleging it has suffered loss and damage from profits Shein made that they were not entitled to.
Fashion retailers around the world have watched their sales undercut by the Singapore-based e-commerce giant’s growth, which is becoming one of the most-cited reasons for business collapses (including Wesfarmers’ decision to shut down catch.com.au). Shein’s local sales reached nearly $1 billion and the company tripled profits in 2023, with sales projected to hit and exceed $1.3 billion.
Roy Morgan data shows 2 million Australians have shopped with Shein at least once in the past 12 months, with most of them (76 per cent) repeat customers.
Shein recently overtook The Iconic in total website traffic in October last year, according to Semrush data cited in Ragtrader, but The Iconic reclaimed its title of second place in January. Myer remains the most-visited fashion site for Australians.
The matter is being heard by Justice James Stellios, who has taken over the case from Justice Michael Lee as he prepares to preside over corporate regulator ASIC’s landmark trial against Star Casino.
The two parties will hold mediation discussions. If they are unsuccessful, a trial is set to begin on May 5. In a case management hearing on Monday, Shein’s barrister proposed to delay the hearing date, which was rejected by Justice Stellios.
Shein’s local representatives were contacted for comment.
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