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