We know that Louis Vuitton doesn't take kindly to the
unauthorized use of its toile trademark. So it must have some
extra swing in its sashay after a ruling released this week by the U.S. International Trade Commission, which puts border
agents on notice to block counterfeit Louis Vuitton goods from
entering the United States.
This could be the start of something big. Vuitton,
represented by Charles Schill and Michael Allan of Steptoe &
Johnson, filed its ITC complaint in December 2010, alleging that
various Chinese counterfeiters and some U.S. retailers were
infringing the notoriously well-protected toile trademark.
Trademark fights are, of course, nothing new for brand-conscious
fashion houses. But there's been increased industry interest in
stopping counterfeit goods before they ever get close to a
consumer. "The game in anti-counterfeiting right now is to move
away from trying to stop the guy on the corner ... to stopping
things at the border," said Susan Scafidi, the director of the
Fashion Law Institute at Fordham University School of Law.
None of the defendants stuck around for a trial of Vuitton's
allegations, according to this week's order. Many reached
settlements, including the defendants represented by Gary Hnath
of Mayer Brown. Many of the remaining respondents did not
participate in the proceedings at all, and were unrepresented.
The commission's April 12 order affirms a summary judgment for
Vuitton from Administrative Law Judge Charles Bullock. It
doesn't specify a remedy, but says the commission may issue
cease-and-desist orders to keep the alleged counterfeiters from
"engaging in unfair acts in the importation and sale" of
infringing articles.
The proceeding will likely embolden fashion companies to
utilize ITC actions, Scafidi said. Vuitton's global intellectual
property director, Valerie Sonnier, told Women's Wear Daily
that, "The chief administrative law judge recognizes the
importance of protecting intellectual property and took the
welcome step of ensuring that its orders include all merchandise
that infringes on our Toile Monogram Marks, and not just
products of the respondents in this case."
Nevertheless, the ITC isn't going to be the ultimate savior
for fashion houses worried about their trademarks, according to
Joseph Gioconda of the Gioconda Law Group, who represents luxury
companies including Michael Kors and Burberry in their trademark
battles. Rulings like the one obtained by Vuitton are only one
weapon in the arsenal, said Gioconda, and are only effective
when a fashion house can name identifiable companies sending big
shipments of easily identifiable counterfeit goods. The ITC
can't protect rightholders from websites that ship fakes
directly to consumers, for example.
"It's a good step in the right direction," said Gioconda,
but "it's certainly not the end of fake Louis Vuittons."
(Reporting by Erin Geiger Smith)
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