Topic: Counterfeiting

Burritos, Biden & Branding; Trump & Trademarks

When thinking about the 2020 United States presidential election, burritos may not be the first image that pops into your mind. But companies in industries ranging from food and beverages to clothing apparel are using brand power to encourage people to vote in this year’s United States presidential election. This blog, while about the use … Continue reading

Are golf polos out of tune with the law?

By Jean-François Drolet and Mat Brechtel (CA) on October 1, 2020 Posted in Advertising, Copyright, Counterfeiting

What do Bill Murray and Donald J. Trump have in common? At first glance, very little, one is a comedian and actor, the other is, of course, President! Yet, while everything drives them apart, both are golf enthusiasts, one owns a clothing golf company and the other owns many prestigious courses but, most importantly, both … Continue reading

The Quebec Superior Court declines to issue a Norwich order to identify the supplier of grey market perfumes

By Judith Robinson and Jonathan Chong on August 25, 2020 Posted in Counterfeiting, Trademark

In a recent judgment, the Quebec Superior Court denied a request for an order against a wholesaler/retailer to identify the suppliers of branded products obtained via parallel importation and sold in Quebec without the brand owner’s authorization. The brand owner sought the information in order to sue the products’ suppliers. Coty Inc., a manufacturer of … Continue reading

Grey Goods and False Labels: Federal Court Grants Interlocutory Injunction in a Trademark Case

By Mark Edward Davis (CA) and Sarah Pennington on August 11, 2020 Posted in Advertising, Counterfeiting, General, Trademark

In a recent trademark passing off case, TFI Foods Ltd. et al. v. Every Green International Inc., 2020 FC 808, the Canadian Federal Court granted an interlocutory injunction prohibiting the defendant from selling grey goods in Canada. Specifically, the defendant was enjoined from using labels falsely identifying it as the exclusive manufacturer of certain imported … Continue reading

Goodwill Hunting: Herbs R Us depreciates the goodwill of Toys R Us

By Karen MacDonald (CA) and Iwan Davies (CA) on July 24, 2020 Posted in Counterfeiting, General, Trademark

Trademark owners often face challenges when attempting to enforce against non-confusing third party trademark use, for example, where someone has adopted a “parody” mark, where the mark may be similar trademark, or have the same ‘look and feel’, but in a completely different consumer space such that consumer confusion is unlikely. But where such mark … Continue reading

Think bankruptcy will save you? Think again, counterfeiters

By Karen MacDonald (CA) on July 7, 2020 Posted in Counterfeiting

One of the most oft heard “defence” from a purveyor of counterfeit goods, when faced with the prospect of a significant damages award, is “I’ll just go bankrupt”. The threat being that, unless the right holder lets the counterfeiter off the hook, the counterfeit will seek to render themselves judgment proof, looking to disincentivize legal … Continue reading

Google Goes Organic to Fight Counterfeiters

By Mat Brechtel (CA) on June 16, 2020 Posted in Counterfeiting, Domain names, General, Trademark

In the midst of the global pandemic, Google has provided some welcome news in the ongoing fight against counterfeiters. Google recently updated its legal complaint system to allow trademark owners to report webpages that sell or promote the sale of counterfeit goods, and has committed to removing the webpages from the search engine’s organic (non-advertisement) … Continue reading

New Balance lands a win in China

By Justin Davidson (HK) and Phoebe Poon (HK) on June 1, 2020 Posted in Counterfeiting, General, Trademark

New Balance, the US sports shoemaker, has had a tough time of it in the PRC IP courts over the last twenty years, in particular against Niu Ba Lun (China) Co., Ltd. and its predecessors (New Barlun), a serial Chinese copycat. A low point was perhaps in 2016, when the Guangdong Higher People’s Court had … Continue reading

Courts Across Canada Continue Reopening Plans

By Mat Brechtel (CA), Madeleine Hodgson (CA) and Renaud Garon Gendron on May 28, 2020 Posted in Copyright, Counterfeiting, General

Please see our updated version of this article, published July 10, 2020. Update – Response from Canadian Courts to COVID-19 As many Canadian jurisdictions begin to relax certain social distancing measures, it is time for an update on the status of the courts across Canada. As with the rest of us, the courts across Canada … Continue reading

Court Suspensions Continue, with Some Exceptions

By Madeleine Hodgson (CA), Renaud Garon Gendron, Mat Brechtel (CA) and Mark Edward Davis (CA) on April 27, 2020 Posted in Copyright, Counterfeiting, General, Patents, Trademark

Please see our updated version of this article, published July 10, 2020. An Update on the Response from Canadian Courts to COVID-19 We are now more than a month in to social distancing measures, and it is time for an update on the status of the courts across Canada. As with the rest of us, … Continue reading

Could the use of Punitive Damages be the way forward in China?

By Justin Davidson (HK) and Phoebe Poon (HK) on April 17, 2020 Posted in Counterfeiting, General, Trademark

In September 2019, the Shanghai Pudong District People’s Court awarded triple punitive damages to Balanced Body Inc., which according to the Shanghai government news report was the first such award for a Shanghai Court to a foreign plaintiff. Background Balanced Body is a provider of Pilates equipment and education and holds PRC trade mark registrations … Continue reading

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