Louis Vuitton, Burberry tackle counterfeiters in the Federal Court of Canada

Posted by Nicholas Stewart

Image courtesy of autoreverse tiramisù

In any metropolitan city around the world – east or west – you will see women and men clutching designer bags and wallets with conspicuous pride and exhibition. If you're like me, you will:

1. observe the fashion accessory;
2. check out the person clutching the accessory; and
3. try and work out if the fashion accessory is the genuine article.

As one conducts this analysis, all kinds of things may come to mind – does the owner look like they could afford a real Louis Vuitton handbag or Burberry scarf? Does the handbag look fake? What shoes is the owner wearing? What are they driving?

The increase in the quality of fake goods means that many are willing to risk the potential embarrassment of owning them. And in some quarters, fake seems to have become a status symbol in itself: 'I own a fake Louis Vuitton handbag, saved myself $3,000 and you can't tell the difference between mine and a real one'.

So the prestigious fashion houses are fighting a war on two fronts. On the one side are the consumers who don't particularly care if people judge them for owning a fake. And on the other are the manufacturers, importers and retailers of counterfeit products.

In Canada, Louis Vuitton and Burberry have just won significant damages against certain manufacturers and retailers of counterfeit Louis Vuitton and Burberry goods. In Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada) Inc. (2011 FC 776), Russell J held the Louis Vuitton and Burberry trade marks were infringed by the defendants, contrary to the Canadian Trade-marks Act. His Honour also found the defendants had infringed certain copyrights owned by Louis Vuitton in the Louis Vuitton Multicoloured Monogram Prints contrary to sections 3 and 27 of the Canadian Copyright Act.

Applying a previous decision of the British Columbia Supreme Court (Louis Vuitton Malletier S.A. et al. v. 486353 B.C. Ltd. et al., 2008 BCSC 799, [2008] B.C.W.L.D. 5075) Russell J pierced the corporate veil and found the individuals behind the defendant corporations personally liable for the counterfeit operations conducted through the corporations.

His Honour ordered the defendants to pay almost C$2.5 million in damages and granted injunctions to permanently restrain the defendants from undertaking further infringing conduct.

While Louis Vuitton and Burberry may have enjoyed success in prosecuting infringements in the western world, in many parts of Asia, it’s a different story. A walk down any number of well known shopping districts in Bali, Shanghai and elsewhere reveals thousands of counterfeit products on sale at 'bargain' prices. These end up on the shoulders of many an Australian visitor - on show for puzzled bystanders back home to wonder to themselves, 'Is that a fake?'

Partner: Paul Kallenbach