I know we have discussed US Trademark laws on UDUAK LAW FIRM blog in the past. However, I don’t believe we have touched on Counterfeits. Now if you are reading this and wondering “what’s the big deal? Why is Louis Vuitton (LV) always fighting everyone? The answer? It is because the stakes are truly high when it comes to counterfeiting and a brand that has the resources to be that aggressive, should.
A few things first.
What is counterfeiting?
In simple terms, it is STEALING. The thief makes an imitation of your product, passes off as the real thing and steals from you!
Assume you are a brand like LV. All of a sudden everywhere you turn, you see people selling your products with your brand name, complete with logo and exact replicas. What do you do? You gasp for air!!
What is at stake?
Beyond the endless sleepless nights and time away from your family and friends to build an empire that the world now wants, what is at issue are the following:
- Huge loss in sales and profits
- Dilution of your brand. There is a reason why you trademark your name.
- Stifling of innovation. Remember the policy reasons behind the Trademark laws? Reference the hyperlink above. We want to encourage innovation. If someone can just steal your work, what is the incentive to get up and do it again??
- Loss of jobs. Guess what? If you lose in sales and profits, you will have to lay off workers. This in turn affects employees, vendors etc. and the national economy. Keeping up with the news lately?
- Loss of tax revenues. The government suffers also. They suffer we can’t have good roads, good schools etc.
- Increased organized crime. When people can steal and make money easily without consequences to their actions, what do you think is next? The thrill, the excitement of stealing and not getting caught only makes them take things to the next level. So, having understood the context of why LV and other brands should care, now you should be saying, “well then what the heck is the government doing about this?”
THE ANTI-COUNTERFEIT LAWS
The US government and other governments worldwide have set up anti-counterfeiting laws to combat these thefts. The U.S government also imposes criminal penalties and imprisonment for these thefts. Now our case here is a very interesting factual scenario. LV & Burberry win a Landmark case in Canada. How so? Here is what you should know:
- Brands, especially fashion brands, should have registered trademarks.
- Don’t just register your trademark and then abandon it. Stay up to date on it, this is your most important asset.
- If you do not register your trademark, you lack the ability to protect and enforce those trademark rights
- If you intend to do business overseas, register your trademark in those respective countries. Identify your priority countries. Identify your product categories that you will be registering. Have these all lined up and register ASAP.
- Okay you have registered your trademark(s). Now follow up with recording your registrations with customs in the targeted countries.
- Follow up customs recording with a surveillance program that alerts both law enforcement, your customer base and foreign lawyers you retain to keep an eye out for your goods being shipped into their respective countries.
- Train both the public, staff and your legal counsels on your real vs. the fake goods
- When a counterfeit good is seized, be sure to show up and follow up with appropriate steps including confirming the goods seized is indeed a counterfeit.
- That is it for now. More to come in due time. Now read the story.
“Louis Vuitton and Burberry have won significant damages in Canada’s single largest trademark counterfeit and copyright case.
In a decision dated June 27, the Federal Court of Canada awarded a total of $2.5 million (CAD) in damages, including $1.4 million for Vuitton and $1.1 million for co-plaintiffs Burberry Limited and Burberry Canada Ltd.
The fashion houses had filed suit last year against Singga Enterprises Inc., and Carnation Fashion Company, both based in Burnaby, B.C., Altec Productions, based in Markham, Ontario, and the respective owners and operators, importers, distributors and online sellers of each company.
Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada) Inc. (2011 FC 776) claimed that Singga, Carnation and Altec had been selling fake Vuitton and Burberry handbags, along with other “fashion accessories,” either online or in stores since January 2008.
Judge James Russell found the defendants to have orchestrated large-scale and sophisticated counterfeit manufacturing operations in China and to have imported vast amounts of counterfeit products into Canada with . . .”
Full Story on Forbes.
Fashionentlaw™ is the brainchild of Uduak Oduok (Ms. Uduak), an ex-fashion model and industry veteran turned Fashion and Entertainment lawyer. The law blog discusses hot topics in pop culture arising primarily out of the fashion industry.
As a legal practitioner, Ms. Uduak has seventeen years of experience counseling individuals and businesses within and outside the creative community. She has counseled designers, apparel manufacturers, models, photographers, retailers, graphic designers, musicians, public relations specialists, and athletes, among others, on diverse legal issues including business formation, licensing, trademark and copyright matters, contracts, intellectual property and contract disputes.
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