Counterfeits: A Legal Faux Pas

Counterfeits: A Legal Faux Pas

Leslie Chong is a JD candidate at Osgoode Hall Law School.

This past June has proven to be a successful month for major fashion houses in their battle against counterfeit products in Canada and the United States. Courts in both countries were applauded by the fashion industry for having issued landmark decisions in favour of Louis Vuitton and Burberry in Canada, and Tory Burch LLC in the United States. With damages at $2.5 million and $164 million respectively, these are the highest damages awarded for trademark and copyright infringement against counterfeit rings.

In the Canadian decision of Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada) Inc., co-plaintiffs Louis Vuitton and Burberry successfully sued three Chinese-based counterfeit enterprises for $2.5 million in damages for both trademark and copyright infringement. After years of private investigations, the two major fashion houses were victorious against those who reproduced and copied Louis Vuitton’s famous monogram and Burberry’s equally famous check pattern. And while damages in Canada for counterfeit have historically been smaller than those granted in the US, this precedent will certainly be a deterrent for those looking to sell counterfeits in our country. 

In Tory Burch LLC, et al. v. Yong Sheng International Trade Co. Ltd. et al., it is clear that courts and designers are going on the offensive against the use of the internet as an invaluable tool in the global counterfeiting business. While it is unsure whether Tory Burch will ever be able to collect on the large sum of damages awarded, the court’s decision to grant the company a permanent injunction against the use of domain-names is a novel step in their fight against cyber-squatters in the fashion industry.

While buying counterfeit products may seem harmless, the existence of counterfeit products is pervasive and the damage unfathomable. It is a lucrative business, with some experts estimating that it produces upwards of $250-billion each year in the United States. However, with these two decisions, the precedent has been set and the message is clear: designers and courts alike are not taking the issue of counterfeit lightly.