Fashion Designers Win against Counterfeiters in Recent Overseas Decisions

There have been a number of recent decisions in the US, Europe and Canada in which fashion labels have been successful against counterfeiters.

US Designer Tory Burch awarded US$ 164 million

In June 2011, US fashion designer Tory Burch was awarded US$164 million in damages as the result of the conduct of 41 online counterfeiters. It has been reported that this is the largest amount of monetary damages ever awarded in a fashion counterfeit case.

The counterfeiters were selling counterfeit items bearing the TORY BURCH word trade mark and the TB Logo trade mark. Tory Burch LLC's action was based on trade mark infringement, the US action of counterfeiting and cyber-squatting as the defendants had registered over 230 domain names containing "toryburch", including toryburchoutlets.com, discounttoryburch.com and toryburch.us. The defendants did not appear or file a response to Tory Burch's claims and were believed to be based in China.

Tory Burch is able to enforce the judgment as the US District Court enjoined the relevant domain name registrars and prohibited them from providing services to the defendants in breach of Tory Burch's trade mark rights. The Court also ordered that money paid into the various defendants' PayPal accounts were to be turned over to Tory Burch in part-payment of the damages award.

European Court of Justice finds eBay liable for the sale of counterfeits

In July 2011, the European Court of Justice held that brand owners are able to bring legal proceedings against eBay and other online retailers in relation to the sale of counterfeit goods on their websites. The decision means that websites (and companies) that facilitate the sale of counterfeit items can now be held accountable.

This decision adds another string to the bow of brand owners seeking to prevent the sale of counterfeit goods online.

Success for Louis Vuitton and Burberry in Canada

Louis Vuitton Malletier S.A. v Singga Enterprises (Canada) Inc  (2011 FC 776)

On 27 June 2011, the Federal Court of Canada awarded CA$ 2.5 million in damages to Louis Vuitton and Burberry in what is reported to be Canada's single largest trade mark and copyright counterfeit case.

Louis Vuitton and Burberry filed proceedings against Singga Enterprises (Canada) Inc, Carnation Fashion Company and Altec Productions, in relation to the sales of counterfeit LOUIS VUITTON and BURBERRY handbags and accessories (both online and in store) by the companies since 2008. The Canadian Federal Court held that Louis Vuitton and Burberry's trade marks and copyright were infringed by the defendants' actions and that the defendants had orchestrated large-scale and sophisticated manufacturing operations in China.

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Authors

Ireland, Elizabeth Senior Associate, elizabeth.ireland@blakedawson.com


  Ritson, Lisa Practice Leader, lisa.ritson@blakedawson.com

This publication is intended only to provide a summary of the subject matter covered. It does not purport to be comprehensive or to render legal advice. No reader should act on the basis of any matter contained in this publication without first obtaining specific professional advice.

This article is copyright. For permission to reproduce this article please email Katherine Kulakowski: katherine.kulakowski@blakedawson.com 

© Blake Dawson 2011

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