Fordham Law

Louis Vuitton wins ITC trademark battle v. Chinese counterfeiters

Susan Scafidi in Reuters, April 19, 2012

Media Source

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."