Topic: Counterfeiting

Canadian Anti-counterfeiting under the USMCA – what you see? We (mostly) already got it

By Karen MacDonald (CA) on October 21, 2018 Posted in Counterfeiting, Trademark

The USMCA – aka NAFTA 2.0 – has a Chapter devoted to intellectual property, which has been the subject much consideration and debate since release of the text on October 1, 2018. With some commentators lamenting that Canada “caved” to US demands and predicting that the IP provisions of the USMCA will stifle Canada’s innovation … Continue reading

(Don’t) knock it off!

By on August 25, 2018 Posted in Counterfeiting

The prevalence of counterfeit goods in Canada reflects weak laws and almost non-existent criminal enforcement within the country, resulting in an appearance of very limited protection for the intellectual property rights of brand owners. As discussed in a recent post on the topic, Canada has once again been named to the “Priority” Watch List in … Continue reading

Canada: out of line in combatting counterfeiting

By Karen MacDonald (CA) on May 1, 2018 Posted in Counterfeiting

For the first time since 2012, Canada has once again been named to the “Priority” Watch List in the 2018 Special 301 Report on Intellectual Property Rights, put out by the Office of the United States Trade Representative (USTR). This downgrade is in part due to Canada’s “poor border enforcement” relating to counterfeit goods. Concerns … Continue reading

Brands Around the World: Best Practices Roundtable on Protecting Your Valuable Brand

By Mark Edward Davis (CA) on November 16, 2017 Posted in Counterfeiting, Trademark

On Monday, November 13, 2017, Norton Rose Fulbright’s New York office was pleased to host an international roundtable on best practices for brand protection. Moderated by Linda Merritt of our Dallas office, the event featured presentations by: Georgina Hey, Sydney Clare Jackman, London Karen MacDonald, Vancouver Daniel Marschollek, Frankfurt / Munich The roundtable brought together … Continue reading

Louis Vuitton’s argument for landlord liability gaining traction in Canada

By Madeleine Hodgson (CA) and Karen MacDonald (CA) on May 4, 2017 Posted in Counterfeiting

Louis Vuitton is attempting to raise the bar in Canada for landlord liability in the sale of counterfeit goods, pursuing several flea market operators in the Ontario Superior Court for the sale of counterfeit Louis Vuitton merchandise taking place on their premises. In its action, Louis Vuitton claims that the landlords of the flea markets … Continue reading

Making us safer, through Brand Protection

By Susan Ross (US) on July 13, 2016 Posted in Counterfeiting

What does brand protection have to do with cybersecurity? A study earlier this year demonstrates the connection. The study reviewed domain names for 11 major industrial control system (ICS) vendors. ICS vendors provide, among other things, supervisory control and data acquisition (SCADA) systems, used in power plants and oil and gas refining. In other words, these … Continue reading

CPB expands information sharing to address counterfeit imports

By Mayura Noordyke (US) on May 2, 2016 Posted in Counterfeiting

On September 18, 2015, U.S. Customs and Border Protection (“CBP”) published a final rule that allows for increased information sharing between CBP and trademark owners in cases of importation of merchandise suspected of bearing counterfeit marks. The new rule, which went into effect October 19, 2016, allows CBP to release information to mark owners that … Continue reading

Transaction declined: are you ready for credit card chips?

By Susan Ross (US) on August 21, 2015 Posted in Counterfeiting

Counterfeit credit cards are a significant problem in the U.S. In fact, almost half of the credit card fraud in the world occurs in the U.S. As we had previously described, the new EMV payment cards include a “liability shift” as of October 1, 2015, which an incentive for both merchants and card issuers to … Continue reading

The EMV “Liability Shift” to occur October 1, 2015

By Susan Ross (US) on May 22, 2015 Posted in Counterfeiting

Counterfeit credit cards are a significant problem in the U.S. In fact, almost half of the credit card fraud in the world occurs in the U.S. A post on the Data Protection Report provided background on EMV technology and described the liability-related incentives the card brands are providing to encourage quicker adoption of EMV to increase … Continue reading

US Enforcement actions against Chinese counterfeit goods

By on October 13, 2014 Posted in Counterfeiting

Recent actions by a key US senator and the Justice Department indicate that consumer goods from China could face increased scrutiny in the near future and beyond. The efforts and associated investment of brand owners are being recognized, but the need to supplement private action with support from law enforcement should be viewed as a … Continue reading

Legal Update: Online sales of counterfeit sports apparel

By Katharyn Grant (US) on December 19, 2013 Posted in Counterfeiting

Following on the heels of action by professional and collegiate sports organizations to stop online sales of counterfeit sports apparel, sporting good giants Adidas and Reebok have now brought suit against nearly 50 defendants they accuse of cybersquatting and/or fraudulently registering Internet domain names referencing their trademarks to facilitate the sale of counterfeit apparel. Adidas … Continue reading

It’s a counterfeit holiday time of year

By Katharyn Grant (US) on December 16, 2013 Posted in Counterfeiting

With the holiday shopping season in full swing, the National Basketball Association, Major League Baseball and the National Hockey League have once again joined as plaintiffs in a civil action aimed at counterfeiters seeking to take advantage of the heightened demand for sports apparel. On December 12, 2013, the three professional sports organizations filed a … Continue reading

Trade mark licensee requests bank to disclose identity of counterfeiter following trap purchase from eBay

By Seiko Hidaka (UK) on November 5, 2013 Posted in Counterfeiting, Trademark

The German Federal Court (Bundesgerictshof) asked the European Court of Justice (CJEU) if a bank could withhold a customer’s information under banking confidentiality rules, where that customer had infringed trade mark law. See Beschluss des I. Zivilsenats vom 17.10.2013 – I ZR 51/12 Ruling. The “Davidoff Hot Water” trade mark licence holder tried to track … Continue reading

Canadian Online Pharmacy Enjoined from Selling Indian Generics to US Customers

By on August 5, 2013 Posted in Counterfeiting

Global Pharmacy Canada (“GPC”) is an online prescription drug retailer that sells drugs sourced in India to customers in the United States. GPC is a Belize company, but has a contractual agreement with an Ontario corporation located in Mississauga, RX Processing Services Inc. (“RXP Ontario”), which takes customer orders, processes payments for drugs, and ensures … Continue reading

Canada Gets Real: Serious Action on Counterfeits and Trade-mark Amendments

By Brian Gray (CA) on March 6, 2013 Posted in Copyright, Counterfeiting, Trademark

The Brand Protection Blog welcomes its first Norton Rose contributor, Mr. Brian W. Gray, Senior Partner, Lawyer, Patent Agent, Trade-mark Agent for Norton Rose Canada. Fulbright & Jaworski L.L.P. will join forces with Norton Rose on June 1, 2013, offering significant depth of experience across Africa, Asia, Australia, Canada, Central Asia, Europe, Latin America, the … Continue reading

EDITORIAL: Is The New York Times Promoting Counterfeiting?

By Saul Perloff (US) on February 11, 2013 Posted in Counterfeiting

On Sunday, February 10, the New York Times devoted a full page in its Magazine to report on a shopping trip to Canal Street’s infamous “Knockoff Row.” However, this was no piece of investigative journalism, blowing the lid off of widespread counterfeiting in the midst of New York City. Instead, the article, enticingly titled “Canal … Continue reading

Big Score for NFL Brand Owners: U.S. Seizes Fake NFL Merchandise and Websites Before Super Bowl

By Susan Ross (US) on February 1, 2013 Posted in Counterfeiting

“Operation Red Zone” may sound like something from an NFL team playbook, but on January 31, 2013, the results of this sting operation were announced by the U.S. Immigration and Customs Enforcement’s (ICE) Homeland Security Investigations, which teamed up with the NFL, the U.S. Customs and Border Protection, the U.S. Postal Inspection Service, PayPal, and … Continue reading

Cyber Monday is a "Banner" Day for 132 Sites Selling Counterfeit Goods

By Susan Ross (US) on November 27, 2012 Posted in Counterfeiting

Brand owners look forward to Cyber Monday with high hopes of strong online sales. Cyber Monday can also be extremely lucrative for counterfeiters. This year, however, dozens of counterfeiters received an unwelcome surprise. The Homeland Security Investigations (HIS) directorate of the U.S. Immigration and Customs Enforcement (“ICE”) agency, worked with the European Police Office (Europol), … Continue reading

International AntiCounterfeiting Coalition Reaches Chinese Counterfeiting Agreements

By on September 21, 2012 Posted in Counterfeiting

In an important development, the International AntiCounterfeiting Coalition (“IACC”) announced that it has reached agreements with two major online platforms in China, Taobao Marketplace and DHgate, to fight online counterfeit goods. The agreements envision cooperation to develop best practices to deal with online counterfeits, use suitable technologies and develop educational materials for buyers and sellers. … Continue reading

Panama 2012 IP Crime Conference

By on September 7, 2012 Posted in Counterfeiting

The International Law Enforcement IP Crime Conference will take place September 11-13 in Panama City. This is an unusual program co-hosted by INTERPOLand the Policía Nacional de Panamáin partnership with Underwriters Laboratories. Following several years of successful programs in Canada, Spain and Hong Kong, this year’s program moves to Panama with a theme of “East … Continue reading

Copyright – Customs and Border Protection – Lego v Best-Lock

By Susan Ross (US) and Saul Perloff (US) on September 6, 2012 Posted in Copyright, Counterfeiting, Trademark

When a trademark owner registers its marks with the U.S. Customs and Border Protection (CBP), CBP may seize imported counterfeits based on trademark claims. CBP may also seize shipments from abroad based upon copyright infringement. See 19 C.F.R. §§ 133.41-46. As stated by CBP, “In regard to copyright infringement, articles that are determined by CBP … Continue reading

Anti-counterfeiting legislation enacted

By on August 22, 2012 Posted in Counterfeiting, Trademark

To combat the continuing problem brand owners and the public have with counterfeit trademarks, Congress has enacted two new pieces of legislation. First, the National Defense Authorization Act (“NDAA”) was signed in December 2011 and went into effect earlier this year. The NDAA increased penalties for counterfeits found in the military supply chain. Second, on July … Continue reading

Addressing rogue websites

By Susan Ross (US) on August 21, 2012 Posted in Counterfeiting

As eCommerce accounts for an ever-growing share of retail sales, rogue websites have become a special concern for brand owners seeking to protect their valuable intellectual property from counterfeiters and others seeking a “free ride” on the brand’s goodwill. Just last week, the Department of Justice announced that a man had plead guilty to selling more … Continue reading